national arbitration forum

 

DECISION

 

Wal-Mart Stores, Inc. v. Michael Folan

Claim Number: FA0709001076262

 

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 Michael Folan (“Respondent”), P.O. Box 99800, EmveryVille, CA 94662.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wal-mart-cams.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., 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 14, 2007, Melbourne It, Ltd. D/B/A Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <wal-mart-cams.com> domain name is registered with Melbourne It, Ltd. D/B/A Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. D/B/A Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. D/B/A Internet Names Worldwide 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 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 8, 2006 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@wal-mart-cams.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 15, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wal-mart-cams.com> domain name is confusingly similar to Complainant’s WAL-MART mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wal-mart-cams.com> domain name.

 

3.      Respondent registered and used the <wal-mart-cams.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Wal-Mart Stores, Inc., is the world’s largest retailer.  In addition to operating retail stores, Complainant also owns and operates the <walmart.com> domain name.  Since 1962, Complainant has owned and continuously used the WAL-MART mark.  Complainant sells electronics, including cameras, computers, toys, furniture, sports and fitness equipment, automotive accessories, and apparel.  Complainant registered the WAL-MART with the United States Patent and Trademark Office (“USPTO”) on February 26, 1985 (Reg. No. 1,322,750). 

 

Respondent registered the <wal-mart-cams.com> domain name on January 19, 2007.  The disputed domain name is being used to redirect Internet users to Respondent’s commercial website.  Respondent’s website is being used in connection with a phishing scheme to solicit credit card and personal information from Complainant’s customers.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant registered the WAL-MART mark with the USPTO, and thus has established rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). 

 

Respondent’s <wal-mart-cams.com> domain name is confusingly similar to Complainant’s WAL-MART mark.  The inclusion of hyphens and the inclusion of the generics term “cams” (i.e. “cameras”) does not substantially distinguish the disputed domain name from Respondent’s mark.  In addition, because Complainant sells electronics, including cameras, the addition of the generic term “cams” enhances the likelihood of confusion between the disputed domain name and the Complainant’s mark.  Moreover, the addition of the generic top-level domain (“gTLD”) “.com” to the domain name does not distinguish the disputed domain name from Complainant’s mark as a top-level domain is required for all domain names.  Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name <mannbrothers.com> confusingly similar to the complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”);  see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.    

 

Rights or Legitimate Interests

 

Complainant claims that Respondent has no rights or legitimate interests in the <wal-mart-cams.com> domain name.  Complainant must establish a prima facie case, meeting the initial burden of proof that Respondent lacks rights and legitimate interests in the disputed domain name.  After Complainant has established a prima facie case, the burden shifts to Respondent to show that it has rights or legitimate interests to the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Complainant has met the burden and established a prima facie case that Respondent lacks rights and legitimate interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”);  see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). 

 

Respondent’s failure to answer the Complaint allows the Panel to presume that the Respondent lacks rights and legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); See also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).  However, the Panel will examine all the evidence in the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c)(ii). 

 

Respondent’s lack of rights and legitimate interests in the disputed domain name is established by the commercial nature of the website.  Respondent’s website is used in connection with a phishing scheme to solicit credit card and personal information from Internet users.  The Panel finds that such use is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Respondent’s WHOIS information indicates that Respondent is “Michael Folan,” and there is no other evidence in the record to indicate that Respondent is or has ever been known by the <wal-mart-cams.com> domain name, or that Respondent is authorized in any way to use Complainant’s mark.  Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").   

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.         

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent is using the disputed domain name to commercially benefit from a phishing scheme, intended to retrieve credit card and personal information from potential WAL-MART customers.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). 

 

Moreover, the operation of a phishing scheme is in and of itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).    

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

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 <wal-mart-cams.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 26, 2007

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum