National Arbitration Forum

 

DECISION

 

Wal-Mart Stores, Inc. v. Brad Merrill

Claim Number: FA0709001076251

 

PARTIES

Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Jennifer L. Gregor, of Foley & Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, IL 60610.  Respondent is Brad Merrill (“Respondent”), 3331 Rainbow Drive, Ste. E, PMB 109, Rainbow City, AL 35906.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com>, registered with Godaddy.com, 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.

 

Honorable Nelson A. Diaz  (ret.)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 13, 2007.

 

On September 13, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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”).

 

An amended Complaint was filed on September 19, 2007.

 

On September 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 10, 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@walmartmoscow.com, postmaster@walmarthungary.com, postmaster@walmartmockba.com, postmaster@walmartnewzealand.com, postmaster@walmartrossia.com, postmaster@walmartrussia.com, postmaster@wal-martrussia.com, postmaster@walmart-russia.com, postmaster@walmartspain.com, postmaster@walmartthailand.com and postmaster@walmartukraine.com by e-mail.

 

A timely Response was received and determined to be complete on September 24, 2007.

 

On October 5, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed  Honorable Nelson A. Diaz (ret) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant owns and has continuously used the well-known WAL-MART Mark in the United States for retail department store services since 1962.  (Hughes Decl. ¶ 4).  As a result of over forty years of use, in the U.S. and other countries, Complainant has created in WAL-MART one of the most famous and distinctive marks in retailing.  Complainant currently operates over 3,300 stores and Super centers, bearing the WAL-MART Mark throughout the United States, and over 2,900 other Wal-Mart branded or other affiliated stores internationally, serving more than 176 million customers weekly.  (Hughes Decl. ¶ 6).  In particular, Wal-Mart has over 450 hundred stores in Asia, including 184 stores in China and 392 stores in Japan and over 300 stores in Europe in the United Kingdom. (Id.).  Additionally, Complainant uses the WAL-MART Mark extensively on its Wal-Mart buildings, advertising, and community support programs associated with its Wal-Mart stores.  (Hughes Decl. ¶ 7).  Complainant also uses the WAL-MART Mark in connection with a wide array of services, such as financial services, food services, vision care, vacation planning, and pharmacy services.  (Hughes Decl).  Complainant also owns and operates a website at <walmart.com>, where consumers can shop online.  (Hughes Decl. ¶ 11, Exh. E).  Consumers around the world can obtain information about and purchase products and services directly from the <walmart.com> website.  (Id.).  Complainant also owns additional active domain names, including, but not limited to, <wal-mart.com>, <walmartsupercenter.com>, and <walmartstores.com> that link to Complainant’s <walmart.com> website.  (Hughes Decl. ¶ 12, Exh. F).  Complainant also has websites that cover other parts of the South East Asia region, including <walmartindia.com> and <walmartbangladesh.com>.  Complainant’s websites are thus a vital part of its business that contribute to its online identity and brand.  (Hughes Decl. ¶ 13).  Complainant therefore has established very strong and distinctive rights in the WAL-MART Mark.[1]  Respondent Brad Merrill (“Respondent”) operates websites at <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com>.  (See Gregor Decl. ¶¶ 3-4, Exh. G).  On information and belief, Respondent registered all of the infringing Domain Names on April 5, 2006. (See Annex 1). 

The websites operated at each of the Domain Names redirect to Complainant’s <walmart.com> website.  (See id. ¶ 4).  By registering the Domain Names and causing them to redirect to Complainant’s website, it is clear that Respondent is seeking to attract Internet users to the Domain Names, taking advantage of Internet users’ confusion that the Domain Names are affiliated, or sponsored by Complainant and preventing Complainant from owning the Domain Names.

B. Respondent contends:

On September  20, 2007, I requested that GoDaddy.com, Inc. transfer all the above domain names to Wal-Mart Stores, Inc.

I was told by GoDaddy that the complainant (Wal-Mart Stores, Inc. represented by  Foley & Lardner LLP) would need to first request a suspension from the National Arbitration Forum.  Once that request has been approved and they (GoDaddy) have been notified by the arbitration forum, I may submit a request to domaindisputes@godaddy.com to have the domain moved to a new account in the complainant's control.  Once the domain has been moved, the complainant will not have access to it until they request and receive a dismissal or termination from the arbitration forum.

On September 21, 2007, I sent Debra Y. Hughes, Esq. (debra.hughes@walmartlegal.com)  an email stating that I (Brad Merrill) would fully cooperate with her and Wal-Mart Stores, Inc. in transferring the domain names listed above over to them.  So if Wal-Mart Stores, Inc. request a suspension from the Forum and that request is approved,. Then I will act in good faith to legally transfer ownership of the disputed domain names over to Wal-Mart Stores Inc. . Thus avoiding any arbitration proceedings.

I feel this is not an egregious dispute, in that I have never offered the disputed domain names for sale nor have I ever used them for any personal profit. All the domain names were simply redirected to the complaint's own website (www.walmart.com). Also, I am fully willing to cooperate with the complaint's request that the domain names be transferred over to them without further action.

With this email I am submitting a response within  twenty calendar days of the official Complaint to the National Arbitration Forum in accordance with the Policy, Rules and Supplemental Rules.

 

C. Additional Submissions

The Amended Complaint requests the National Arbitration Forum (the “Forum”) pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999 and incorporated in the Registration Agreement with the Registrar of domain names.  By submitting this Complaint to the Forum, Complainant agrees to abide and be bound by the provisions of the Policy, the ICANN Rules, and the Forum’s Supplemental Rules.  Complainant provides Trademark Registrations in addition to the aforementioned registrations, Complainant has also registered its famous WAL-MART Mark across the world for a host of goods and services in countries throughout Africa, Asia, Australia, North & South America, and Europe, including countries such as the Russian Federation, Hungary, New Zealand, Spain, and Thailand.  Wal-Mart also has registered numerous domain names that include its famous WAL-MART Mark, including <wal-mart.com>, as well as numerous other domain names that incorporate its famous WAL-MART Mark—either, in combination with terms specific to various countries and geographic locations throughout the world, or in combination with terms specific to various goods and services.

FINDINGS

 

The main issues are under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”

 

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:

 

(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.

 

Identical and/or Confusingly Similar

 

Respondent’s Domain Names are confusingly similar to Complainant’s WAL-MART Mark.  Each of the Domain Names merely comprise Complainant’s WAL-MART Mark (or a version thereof) plus a geographic term or a common misspelling of a geographic term—Moscow, Mockba, Hungary, New Zealand, Russia, Rossia, Spain, Thailand, and Ukraine.  It is well-settled that the mere addition of a top-level domain name does not overcome the confusing similarity between a disputed domain name and Complainant’s Mark and, thus, does not factor into any analysis under Policy ¶ 4(a)(i). [2]  Likewise, domain names comprising a Complainant’s mark and a geographic term[3] or misspellings of trademarks or common typographical errors[4] have also been found to be confusingly similar to the corresponding marks.  Panels have previously held that the domain names <walmartindia.com> and <walmartbangladesh.com> were confusingly similar to Complainant’s WAL-MART Mark.[5]  Respondent’s registration of the Domain Names in this action is no different.  Accordingly, the Domain Names in dispute, which simply add geographic terms to the WAL-MART Mark, are confusingly similar to Complainant’s Mark in violation of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

The mere registration of a domain name does not establish rights or a legitimate interest in that name.  See Polaroid Corp. v. Jay Strommen, D2005-1005 (WIPO Nov. 22, 2005).  Under the Policy, Respondent bears the burden of proving that it has rights or legitimate interest in the Domain Names.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).  Respondent cannot overcome this burden for at least two reasons: (1) Respondent has no rights in the WAL-MART Mark, and (2) Respondent is not making a legitimate noncommercial or fair use of the Domain Names.

 

 

Registration and Use in Bad Faith

 

Under Paragraph 4(b)(iv) of the Policy, using a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating confusion with the Complainant’s mark is evidence of bad faith registration and use.  Respondent uses the Domain Names for precisely such purpose and there can be no doubt that the contested websites have caused, and will continue to cause, confusion among individuals seeking Complainant’s products and services.  Here, Respondent uses the Domain Names with the intention of gaining commercially by attracting Internet users that confuse the site as affiliated, or sponsored by Complainant.  Respondent’s registration of the Domain Names for this purpose and using them in this matter constitute bad faith under the Policy.[6]

 

DECISION

Respondent contends that it has requested that GoDaddy.com, Inc. transfer the <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com> domain names to Complainant.  However, after the initiation of this proceeding, GoDaddy.com placed a hold on Respondent’s account and cannot transfer the domain names while this proceeding is still pending.  As a result, the Panel may find that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may decide to forego the traditional UDRP analysis and order an immediate transfer of the <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com> domain names.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]under such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).  Having established all elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <walmartmoscow.com>, <walmarthungary.com>, <walmartmockba.com>, <walmartnewzealand.com>, <walmartrossia.com>, <walmartrussia.com>, <wal-martrussia.com>, <walmart-russia.com>, <walmartspain.com>, <walmartthailand.com>, and <walmartukraine.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon . Nelson A. Diaz  (ret), Panelist
Dated: October 16, 2007

 

 

 

 

 

 

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