Wal-Mart Stores, Inc. v. James D'Souza
Claim Number: FA0708001060854
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Gary
J. Rinkerman, of Baker &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walmarrt.com>, registered with Lead Networks Domains Pvt. 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 13, 2007.
On August 28, 2007, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <walmarrt.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that the Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 24, 2007.
An Additional Submission, complying with the requirements of Supplemental Rule 7, was received on October 1, 2007. The Panel has taken into account Complainant’s supplemental filing in reaching its Decision. However, the Decision would have been the same without the Additional Submission.
On October 1, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant is the world’s largest retail company, employing more than 1.8 million people in nearly 6,500 retail stores and wholesale clubs in fifteen countries. Its operations yield in excess of $300 Billion USD annually.
- As a result of its extensive and continuous use, the WAL-MART service mark is known worldwide. That mark has been used by Complainant since 1962 and subject to registered trademarks in various forms, including simply WAL-MART (United States Registration No. 1,784,039; July 20, 1993).
- Complainant has also registered the <walmart.com> domain name for use in its operations.
- The disputed domain name <walmarrt.com> is confusingly similar to Complainant’s service mark. The slight misspelling of the mark in the domain name is a classic example of illegitimate typo-squatting.
- Respondent is not affiliated with Complainant, has not obtained authorization from Complainant to use it service mark in any manner, and is not commonly known by a name resembling the mark.
- Respondent has neither used, nor made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has used the domain name to generate pay-per-click fees related to third party website advertising links listed at the website found at the name.
- The fees generated by Respondent at its website connected to the disputed domain name negate any finding of noncommercial or fair use of the name.
- Respondent registered and is using the disputed domain name in bad faith. Its actual and constructive knowledge of Complainant’s service mark mean that the name was registered in bad faith. Typo-squatting is by itself evidence of bad faith registration and use. Respondent’s generation of fees through the redirection of Internet users to third party websites through the likelihood of confusion with Complainant’s service mark is
still more evidence of bad faith.
- Respondent was unaware of the various service marks held by Complainant.
- The disputed domain name is dissimilar to Complainant’s marks. The marks contain a hyphen and that is a big difference with respect to the disputed domain name.
- Respondent has a right to the disputed domain name because Respondent paid valuable consideration for it.
- The disputed domain name was registered in 2001, and for many years Complainant failed to object to its registration. As a result, Respondent purchased the name as it became available.
- Respondent offers to sell the disputed domain name to Complainant for the full cost paid by Respondent.
- Respondent denies receiving any pay-per-click fees through use of the disputed domain name. It is merely parked with the registrar.
C. Complainant’s Supplemental Contentions
- Respondent’s failure to include a certification statement required by the Policy means that the Response should be accorded little weight.
- Complainant’s failure to protest registration of the disputed domain name prior to this proceeding is of no moment and, in any event, such objection has no merit when brought by Respondent who has “unclean hands” with respect to usurpation of Complainant’s service mark.
- Lack of a hyphen and addition of a letter “r” do not distinguish the disputed domain name from Complainant’s famous service mark.
- Respondent is not credible when
claiming that he was unaware of Complainant’s service mark. Respondent’s registration of a domain name so
closely resembling the mark shows that Respondent has actual knowledge of the
mark. Furthermore, as Complainant has
registered WAL-MART in
- Respondent has engaged in a pattern of registering domain names that involve slight misspellings of famous trademarks (e.g., <christaindior.com> vis-a-vis CHRISTIAN DIOR), further evidence of bad faith in this case.
- Respondent has provided no evidence to rebut Complainant’s prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.
- Respondent’s claim that the disputed domain name is “parked” with the Registrar does not refute the notion that fees are being collected based on the advertising links listed at the website attached to the name. Respondent cannot hide behind someone else’s administration of the name for Respondent’s profit.
- Respondent’s offer to sell the disputed domain name to Complainant is still more evidence of Respondent’s lack of rights or legitimate interests in the name.
Complainant is an
extremely large and well-known
Respondent is listed as the registrant of the disputed domain name <walmarrt.com> and the record of registration was created on December10, 2001. The website found at the disputed domain name contains links to third party websites not affiliated with or authorized by Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel has been
presented by Complainant, one of the world’s best known retailers, with valid
registrations of its main service mark, WAL-MART, in the
The disputed domain name <walmarrt.com> is distinguished from Complainant’s service mark only by the absence of a hyphen and the addition of an extra letter “r” and the gTLD, “.com.” Contrary to Respondent’s assertion, none of these deviations serves to provide the necessary distinction to prevent the name and the mark from being confusingly similar to the reasonable internet user. For example, the typical user wishing to access Complainant’s products or services by typing “walmart” might easily type “walmarrt.” Previous UDRP panels have labeled such mal-registration of domain names as “typo-squatting” and have typically found confusing similarity when encountering the phenomenon. The Panel agrees with that position. SeeWal-Mart Stores, Inc. v. Modern Empire Internet Ltd., FA 638265 (Nat. Arb. Forum March 16, 2006); see also Ritz-Carlton Hotel Co., LLC v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that “…the omission of a hyphen in the domain names is not sufficient to differentiate the domain names from the mark”); see also Tracktime, Inc. v. The Web People, FA 95860 (Nat. Arb. Forum Dec. 6, 2000) (finding that the addition of “.com” is insignificant when determining whether a domain name is confusingly similar to a complainant’s mark).
Accordingly, the Panel finds that Complainant has established that the disputed domain name is confusingly similar to a service mark in which it has rights.
Although paragraph 4(a)(ii) places the burden on Complainant to prove that Respondent has no rights or legitimate interests in the disputed domain name, it has been long accepted among Policy panels that a complainant need only present a prima facie case for that proposition before the burden to go forward shifts to the respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Aetna Inc. v. Carrington, FA 154527 (Nat. Arb. Forum May 20, 2003); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). In the present circumstances, Complainant has met its reduced burden of submitting to the Panel a prima facie case on this issue through Complainant’s substantiation of its rights in its service mark, as decided above, and its unequivocal denial that Respondent possesses any license or authority from Complainant to make use of that mark as a domain name or in any other manner.
Respondent’s only argument on this issue is to assert its right to the disputed domain name based simply on Respondent’s payment for it. Obviously, that argument is insufficient, otherwise there would never be a need for decision under the Policy as every respondent would meet that condition.
Furthermore, after considering the criteria listed in paragraph 4(c) of the Policy, the Panel finds no other rationale to support Respondent’s contention that it has rights or legitimate interests in the disputed domain name. Clearly, Respondent’s name, James D'Souza, bears no resemblence to <walmarrt.com>, and Respondent fails to suggest that he owns a company whose name does, so the criterion cited in paragraph 4(c)(ii) does not apply. Moreover, Respondent’s assertion that he has merely parked the disputed domain name with its registrar means that neither paragraph 4(c)(i) – i.e., use, or demonstrable preparations to use, the disputed domain name in a bona fide offering of goods or services – nor paragraph 4(c)(iii) – i.e., noncommerical or fair use of the disputed domain name – can assist Respondent because both of those paragraphs are based on some use, or preparation to use, the name as opposed to “parking” it. Consequently, the Panel must find that Respondent has failed to meet its burden to go forward in the face of Complainant’s prima facie case.
Ergo, the Panel rules that Complainant has succeeded in proving that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds Respondent’s contention that he was unaware of Complainant’s world-famous service mark to be utterly disingenuous. Mr. D’Souza would have the Panel believe that he just has the innocent misfortune of registering domain names like <walmarrt.com> that just happen to resemble famous trademarks. As noted by Complainant in its Additional Submission, this same “mishap” apparently occurred to Respondent when he registered <christaindior.com>, which “just happened” to mirror the world-famous CHRISTIAN DIOR mark. See Christian Dior Couture v. Private Whois for Christaindior.com/James D’Souza, D2007-0929 (WIPO Sept. 6, 2007). Like the panel in that case, which transferred that disputed domain name to the complainant, the Panel in this case refuses to buy the tale that poor Mr. D’Souza, though possessing the sophistication needed to register domain names, is totally unfamiliar with famous companies like Wal-Mart and Christian Dior and their equally famous marks.
The Panel notes
that it has been long established by prior UDRP panels that bad faith
registration and use of disputed domain names may be based solely on the
worldwide fame of the trademarks or service marks to which those names are
confusingly similar, if the respondent has no connection to the corresponding
complainant or its goods or services. See Chanel,
Inc. v. Buybeauty.com, D2000-1126 (WIPO Nov. 22, 2000) (“CHANEL is an
immediately recognizable and famous mark that exclusively identifies
Complainant. …Given that Respondent has no connection with Complainant and has
never been authorized by Complainant to use the CHANEL mark, the very fact that
Respondent has registered buychanel.com establishes bad faith use and
registration.”); see also Guerlain
Following the reasoning above, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walmarrt.com> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster,
Dated: October 15, 2007
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