Wal-Mart Stores, Inc. v. Cocoman, Inc.
Claim Number: FA0709001076564
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Jennifer
L. Gregor, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>, <samsclubairductcleaning.com>, <samsclubhomeservice.com>, <samsclubhomeservices.com>, <walmartcarpetcleaning.com>, <walmartclean.com>, <wal-martcleaning.com>, <walmartcleaning.com>, <walmartductcleaning.com>, <samsclubcleaning.com>, <walmarthomeservice.com>, <wal-marthomeservice.com>, <walmarthomeservices.com>, <wal-marthomeservices.com>, and <wal-marthomesservices.com>, registered with GoDaddy.com, 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.
Terry F. Peppard as Panelist.
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 <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>, <samsclubairductcleaning.com>, <samsclubhomeservice.com>, <samsclubhomeservices.com>, <walmartcarpetcleaning.com>, <walmartclean.com>, <wal-martcleaning.com>, <walmartcleaning.com>, <walmartductcleaning.com>, <samsclubcleaning.com>, <walmarthomeservice.com>, <wal-marthomeservice.com>, <walmarthomeservices.com>, <wal-marthomeservices.com>, and <wal-marthomesservices.com> domain names are registered with GoDaddy.com, Inc. and that 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").
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@samsclubcarpetcleaning.com, postmaster@samsclubductcleaning.com, postmaster@samsclubairductcleaning.com, postmaster@samsclubhomeservice.com, postmaster@samsclubhomeservices.com, postmaster@walmartcarpetcleaning.com, postmaster@walmartclean.com, postmaster@wal-martcleaning.com, postmaster@walmartcleaning.com, postmaster@walmartductcleaning.com, postmaster@samsclubcleaning.com, postmaster@walmarthomeservice.com, postmaster@wal-marthomeservice.com, postmaster@walmarthomeservices.com, postmaster@wal-marthomeservices.com, and postmaster@wal-marthomesservices.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 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is well-known as the world’s largest retailer,
operating stores across the
Complainant offers a plethora of consumer products and services through its stores, including those relating to home and business cleaning.
Complainant has conducted business under the WAL-MART mark for more than forty years.
Complainant also operates Sam’s Club stores, in which it offers consumer products in bulk quantities under the SAM’S CLUB mark.
Complainant owns registrations with the United States Patent and Trademark Office (“USPTO”) for the SAM’S CLUB service mark (Reg. No. 2,036,770, issued February 11, 1997), and the WAL-MART service mark (Reg. No. 1,783,039, issued July 20, 1993).
Complainant also operates several websites, including those located at the domain names <walmart.com> and <samsclub.com>.
Complainant has not given Respondent permission to use its SAM’S CLUB or WAL-MART marks for any purpose.
Respondent registered the contested domain names <walmarthomeservices.com>, <walmartductcleaning.com>,
<walmartcarpetcleaning.com> and <walmartclean.com> on
June 10, 2006.
Respondent registered the contested domain names <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>, <samsclubairductcleaning.com>, <samsclubhomeservice.com>, <samsclubhomeservices.com>, <wal-martcleaning.com>, <walmartcleaning.com>, <samsclubcleaning.com>, <walmarthomeservice.com>, <wal-marthomeservice.com>, <wal-marthomeservices.com>, and <wal-marthomesservices.com> on June 13, 2006.
Respondent’s <walmarthomeservices.com> and <wal-marthomeservices.com> domain names do not resolve to any active website.
The remaining disputed domain names all resolve to web sites which feature links to third-party websites, some of which are in competition with the business of Complainant.
Respondent’s domain names are confusingly similar to Complainant’s SAM’S CLUB and WAL-MART marks.
Respondent does not have any rights or legitimate interests in these domain names.
Respondent registered and uses the contested domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s registration of the WAL-MART and SAM’S CLUB
marks with the USPTO sufficiently establishes its rights in the marks 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 U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat.
Arb. Forum Dec. 9, 2003): “[O]nce the USPTO has made a determination that a
mark is registrable, by so issuing a registration, as indeed was the case here,
an ICANN panel is not empowered to nor should it disturb that determination.”
Complainant alleges that
Respondent’s disputed domain names are confusingly similar to either
Complainant’s SAM’S CLUB mark or its WAL-MART mark. We agree. The domain names <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>,
<samsclubairductcleaning.com>, <samsclubcleaning.com>,
<samsclubhomeservice.com>, and <samsclubhomeservices.com>
include the entire SAM’S CLUB mark and merely omit the apostrophe in the
mark and add the generic terms “carpet,” “cleaning,” “duct,” “air,” “home,”
“service,” and “services”, all of which are related to goods or services that
Complainant provides. In the same way,
the domain names <walmartcarpetcleaning.com>, <walmartclean.com>, <walmartcleaning.com>, <walmartductcleaning.com>,
<walmarthomeservice.com>, <walmarthomeservices.com>
include the entire WAL-MART mark, simply omitting the hyphen and adding similar
generic terms. The <wal-marthomeservice.com>,
<wal-marthomeservices.com>, <wal-martcleaning.com>,
and <wal-marthomesservices.com> domain names
incorporate the complete WAL-MART mark and, again, add the same generic terms.
Under Policy ¶ 4(a)(i), the omission of punctuation such as apostrophes and hyphens does not render a disputed domain name sufficiently distinct from a competing mark. Likewise, the addition of a generic term to a mark does not negate confusing similarity. Moreover, the inclusion of the generic top-level domain “.com” to each of the disputed domains is irrelvant under the Policy, because a top-level domain is required of all domain names. Thus, under Policy ¶ 4(a)(i), the <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>, <samsclubairductcleaning.com>, <samsclubcleaning.com>, <samsclubhomeservice.com>, and <samsclubhomeservices.com> domains are confusingly similar to Complainant’s SAM’S CLUB mark, and the <walmartcarpetcleaning.com>, <walmartclean.com>, <walmartcleaning.com>, <walmartductcleaning.com>, <walmarthomeservice.com>, <walmarthomeservices.com>, <wal-marthomeservice.com>, <wal-marthomeservices.com>, <wal-martcleaning.com>, and <wal-marthomesservices.com> domains are confusingly similar to Complainant’s WAL-MART mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to a complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); further see Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to a complainant’s mark); and see Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to a complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which a complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); and see Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000):
[T]he
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name registrants .
. . .
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant makes out a prima facie case on this point, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. In the present case, Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Respondent’s failure to respond to the Complaint allows us
to presume that Respondent lacks rights and legitimate interests in the disputed
domain names. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). However, we will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests under Policy ¶ 4(c).
We first observe in this connection that Complainant asserts and Respondent does not deny that Respondent is not commonly known by the disputed domain names. Moreover there is nothing in the record, including Respondent’s WHOIS information, to suggest that Respondent is known by any of the disputed domain names. And, there is no dispute that Complainant has not given Respondent permission to use its SAM’S CLUB or WAL-MART marks for any purpose. Therefore, we conclude that Respondent is not commonly known by the disputed domain names, which indicates a lack of rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003): “Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.” See also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use a trademarked name).
We also note that Complainant alleges, and Respondent does not deny, that Respondent uses the contested domain names to display websites featuring links to businesses in competition with Complainant, and we presume that Respondent earns click-through fees from these links. This does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and therefore further indicates Respondent’s lack of rights and legitimate interests in the disputed domain names. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark to attract Internet users to its own website, which contained hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of disputed domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed links, some of which resolved to that complainant’s competitors, was not a bona fide offering of goods or services).
In addition, Respondent’s <walmarthomeservices.com> and <wal-marthomeservices.com> domain names do not currently resolve to active websites. This failure to use the disputed domain names also indicates that Respondent lacks rights and legitimate interests in those domains under Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where a respondent failed to submit a response to a complaint and made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found where a respondent fails to use disputed domain names in any way).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is using
the contested domain names in bad faith pursuant to Policy ¶ 4(a)(iii). Respondent does
not deny that it is using the majority of the disputed domain names, which we
have found are confusingly similar to Complainant’s SAM’S CLUB and WAL-MART
marks, to redirect Internet users to websites in competition with the business
of Complainant. As mentioned above, we presume
that Respondent benefits commercially from these websites. Respondent is thus taking advantage of the
likelihood that Internet users seeking Complainant’s business will be confused
as to Complainant’s possible affiliation with the disputed domain names. This is evidence of Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v.
Cook, FA 208629 (Nat. Arb. Forum Dec. 22,
2003):
Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because that respondent was using the domain to attract Internet users to its commercial website).
Furthermore, Respondent’s failure to use the <walmarthomeservices.com> and <wal-marthomeservices.com> domain names for any purpose indicates that Respondent registered and is using those disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where a respondent made no use of the domain name there in question and there were no other indications that that respondent registered and used the domain name for any non-infringing purpose).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <samsclubcarpetcleaning.com>, <samsclubductcleaning.com>, <samsclubairductcleaning.com>, <samsclubhomeservice.com>, <samsclubhomeservices.com>, <walmartcarpetcleaning.com>, <walmartclean.com>, <wal-martcleaning.com>, <walmartcleaning.com>, <walmartductcleaning.com>, <samsclubcleaning.com>, <walmarthomeservice.com>, <wal-marthomeservice.com>, <walmarthomeservices.com>, <wal-marthomeservices.com>, and <wal-marthomesservices.com> domain names be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 24, 2007
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