Walmart Inc. v. Salih AbdulAzeez / SAA Trading LLC
Claim Number: FA2201001979583
Complainant is Walmart Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is Salih AbdulAzeez / SAA Trading LLC (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bigdreamzwlmstore.com>, <wlmstores.com>, and <shopwlmstores.com>, registered with NameCheap, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 7, 2022; the Forum received payment on January 7, 2022.
On January 8, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <bigdreamzwlmstore.com>, <wlmstores.com>, and <shopwlmstores.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 January 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bigdreamzwlmstore.com, postmaster@wlmstores.com, postmaster@shopwlmstores.com. Also on January 11, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail 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. Respondent did however send emails to the Forum, see below.
On February 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that, since its founding more than fifty years ago, it has grown exponentially into the world’s largest retailer, offering a wide variety of consumer goods and services throughout the United States, including via a family of trademarks consistently of or featuring its WALMART brand. Each week, nearly 265 million customers and members visit Complainant’s approximately 11,500 stores under 56 banners in 27 countries and e-commerce websites, a substantial portion of which prominently feature or display the WALMART mark. Complainant currently employs over 2.2 million associates worldwide and is actively hiring associates or posting employment opportunities to add to its ranks. Complainant has rights in the WALMART mark based on its registration in the United States in 2009. The mark is famous.
Complainant alleges that the disputed domain names are confusingly similar to its WALMART mark, since they contain the abbreviation “WLM” of Complainant’s mark and merely add the generic terms “store,” “stores,” “shop”, “big”, and/or “dreamz” (a misspelling of the word “dreams”), and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names and is neither an authorized user nor licensee of the WALMART mark. Additionally, Respondent fails to use any of the disputed domain names for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use. Instead, the resolving websites initially displayed Complainant’s mark and logo and advertisements for a book titled “How to start and manage a Walmart e-commerce store”. After Complainant sent a cease-and-desist letter, the resolving websites for the <bigdreamzwlmstore.com> and <shopwlmstores.com> domain names were redirected to <clickfunnels.com>, a site which appears to host various pay-per-click hyperlinks, while the <wlmstores.com> domain name became inactive.
Further, says Complainant, Respondent registered and used the disputed domain names in bad faith by using them to promote his book on how to open a Walmart e-commerce store. Subsequently, two of the disputed domain names resolved to a third-party website offering pay-per-click hyperlinks which likely generate revenue for Respondent, while the other disputed domain name became inactive. When Complainant sent a cease-and-desist letter, Respondent removed content from the <wlmstores.com> resolving website, but registered the <shopwlmstores.com> domain name as a replacement. Respondent registered the disputed domain names with constructive and actual knowledge of Complainant’s rights in the WALMART mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its several emails to the Forum, Respondent states, in pertinent part:
“ … these sites don’t exist anymore. They have been removed a long time ago and they were for informational when they were up.”
“… I will delete them from my account.”
“Why would you file a complaint about domains I purchased on name cheap? checked and we’re available so I purchased them. This is absolutely crazy.”
“I really have no clue what you are talking about? All I did was buy domain names. I never sold anything using these domain or made any money from these domains.”
Respondent also alleges that Complainant is a racist company.
Complainant owns the mark WALMART and uses it to provide a variety of retail services, including e-commerce sites. The mark is famous.
Complainant’s rights in its mark date back to at least 2009.
The disputed domain names were registered in 2021.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names initially resolved to websites that displayed Complainant’s mark and logo and advertisements for a book related to Complainant’s business. Two of the resolving websites were subsequently redirected to a third-party site displaying pay-per-click hyperlinks, while the other domain name became inactive.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names contain the abbreviation “WLM” of Complainant’s WALMART mark and merely add the generic terms “store,” “stores,” “shop”, “big”, and/or “dreamz” (a misspelling of the word “dreams”), and the “.com” generic top-level domain (“gTLD”). Previous Panels have found confusing similarity where a Respondent abbreviates Complainant’s mark, especially when adding terms which relate to Complainant’s business. See Capital One Financial Corp. v. SoftTech, FA1404001555170 (Forum May 20, 2014) (“abbreviating a complainant’s mark in a disputed domain name does not sufficiently distinguish the disputed domain name from the trademark”); see also Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Phillips 66 Co. v. Dynadot, FA2004001891642 (Forum May 13, 2020) (finding that the domain <p66jobs.com> was an abbreviated version of complainant’s PHILLIPS 66 mark and finding it confusingly similar); see also Sub-Zero, Inc. v. MCR Services, FA1704001728626 (Forum June 6, 2017) (finding the domain <szpartz.com> confusingly similar to complainant’s SUB-ZERO mark due, in part, to the fact that “sz” amounted to an abbreviated version of the mark). Furthermore, the addition of terms to a mark also may not be sufficient to distinguish a disputed domain name from the mark it incorporates. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Thus the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: when response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Here, the WHOIS information of record identifies “Salih AbdulAzeez / SAA Trading LLC” as the registrant of the disputed domain names. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent initially used each of the disputed domain names to display Complainant’s WALMART mark and logo, and to advertise a book on how to open a WALMART e-commerce store; this may have confused consumers into believing there was a connection or affiliation between Complainant and Respondent. Previous Panels have found that passing off as a trademark holder does not demonstrate rights or legitimate interests in an infringing domain name under Policy ¶¶ 4(c)(i) or (iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Therefore the Panel finds that Respondent failed to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Subsequently, the <bigdreamzwlmstore.com> or <shopwlmstores.com> domain were redirected to a third-party website displaying monetized hyperlinks. Previous Panels have held that using an infringing domain name to host pay-per-click hyperlinks does not amount to either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”).
And, subsequently, the <wlmstores.com> domain name became inactive. Failure to make active use of an infringing domain name does not give a domain holder rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”).
For all the above reasons, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the resolving websites initially displayed advertisements for a book that related to Complainant’s business. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Asbury Auto Group Inc v. Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Respondent’s subsequent use of the disputed domain names does not contradict the above finding.
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving websites initially displayed Complainant’s mark and logo, and referred to Complainant’s business; furthermore, in its emails Respondent admits that it knows of Complainant and its business. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bigdreamzwlmstore.com>, <wlmstores.com>, and <shopwlmstores.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 7, 2022
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