Wal-Mart Stores, Inc. v.
S.D. Web Professionals
Claim Number: FA0709001076225
PARTIES
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Uleses
C. Henderson, of Foley & Lardner LLP, 2029 Century
Park East, 35th Floor,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <superwalmartstores.com>, registered
with Wild
West Domains, Inc.
PANEL
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 A. Einhorn appointed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 12, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.
On September 13, 2007, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <superwalmartstores.com> domain name
is registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 9, 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 postmaster@superwalmartstores.com
by e-mail.
A timely Response was received and determined to be complete on September 19, 2007.
On September 28, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David A. Einhorn as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
B. Respondent
Respondent contends that it registered the <superwalmartstores.com> domain
name for the purpose of promoting its concert to “raise awareness in
FINDINGS AND DISCUSSION
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:
the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
the Respondent has no rights or legitimate interests in respect of the domain name; and
the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the WAL-MART mark, inter alia, through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,783,039 issued July 20, 1993).
It is well established that additional terms in a domain name should not effect a finding of confusing similarity where, as in the case here, the additional terms “super” and “stores” are totally non-distinctive in nature. Thus, in the similar arbitration of Wal-Mart Stores, Inc., v. Davies, D2006-0031 (WIPO Mar. 9, 2006), the panel found the domain <wal-mart-superstore.com> to be confusingly similar to Wal-Mart’s WAL-MART mark.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent is neither commonly known by the <superwalmartstores.com> domain name nor licensed to register a domain name featuring the WAL-MART mark. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent has failed to present any evidence that it is licensed to use the WAL-MART mark or that it is commonly known by the <superwalmartstores.com> domain name. Respondent has thus failed to establish legitimate rights or interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for license or permission to use the trademarked name).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of Complainant’s huge size and profile, it is inconceivable that Respondent was unaware of Complainant and its rights at the time of registration of the domain name. See Wal-Mart Stores, Inc. v. Davies, supra. In fact, Respondent characterizes his family as regular Wal-Mart customers. Respondent’s actual and constructive knowledge of Complainant’s mark constitutes evidence of bad faith registration and use. See State Farm Mut. Auto. Ins. Co. v. Spagnualo, FA 418606 (Nat. Arb. Forum Mar. 23, 2005) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and concluding that the respondent had registered the domain name in bad faith).
The Panel therefore finds that Policy ¶ 4(a)(iii) has also been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <superwalmartstores.com>
domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: October 12, 2007
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