Walmart Inc. v. Lei Shi
Claim Number: FA2011001920212
Complainant is Walmart Inc. ("Complainant"), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Lei Shi ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walmartplus.co>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020. The Complainant was received in English.
On November 11, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by email to the Forum that the <walmartplus.co> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 18, 2020, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 8, 2020 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@walmartplus.co. Also on November 18, 2020, the Chinese and English language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world's largest retailer; it has used the WALMART mark in connection with its goods and services since 1962, and recently launched a membership service under the name WALMART+. Complainant owns numerous trademark registrations for WALMART and related marks in the United States, China, and other jurisdictions worldwide, and claims that the mark has become famous internationally. Complainant states that it has trademark applications pending for WALMART+ and WALMART PLUS.
Respondent registered the disputed domain name <walmartplus.co> in March 2020. Complainant states that Respondent is not commonly known by the domain name, is not a licensee or affiliate of Complainant, and is not authorized to use Complainant's marks. The domain name is being used to display pay-per-click links to third-party commercial websites, some of which compete with Complainant.
Complainant contends on the above grounds that the disputed domain name <walmartplus.co> is confusingly similar to its WALMART mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting that the disputed domain name targets English-language trademarks and that this and other circumstances indicate that Respondent is familiar with the English language. In addition, the Panel notes that the content of the website to which the domain name resolves is in the English language; that the Written Notice of the Complaint was served upon Respondent in both English and Chinese; and that Respondent has made no objection to Complainant's request that the proceeding be conducted in English.
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See, e.g., Twitter, Inc. v. Zhang Jie / 张杰, FA 1919786 (Forum Dec. 9, 2020) (deciding to conduct proceeding in English in similar circumstances). The Panel decides that English shall be the language of this proceeding.
The disputed domain name <walmartplus.co> incorporates Complainant's registered WALMART trademark, adding the generic term "plus" and the ".co" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Netflix, Inc. v. WhoisGuard Protected, WhoisGuard, Inc / Linda Deutch / Jamaal Baine / c/o WHOIStrustee.com Ltd., Registrant of netflixnew.com, D2017-2099 (WIPO Jan. 24, 2018) (finding <netflixplus.co> confusingly similar to NETFLIX); Wal-Mart Stores, Inc. v. Steve Johnson, DCO2014-0010 (WIPO Aug. 11, 2014) (finding <walmart.co> confusingly similar to WAL-MART). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to display pay-per-click links, including links to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Mediacom Communications Corp. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1913479 (Forum Oct. 23, 2020) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that incorporates Complainant's famous mark and is using it to display pay-per-click links to third-party websites, some of which compete with Complainant. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Kellogg North America Co. v. Domain Privacy / Above.com Domain Privacy, FA 1906152 (Forum Sept. 7, 2020) (finding bad faith in similar circumstances); Expedia, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1850108 (Forum July 29, 2019) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walmartplus.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 14, 2020
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