Wal-Mart Stores, Inc. v. Yoon Jinsoo
Claim Number: FA0709001076575
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Jennifer
L. Gregor, of Foley & Lardner LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wall-mart.com>, registered with Cydentity, Inc. d/b/a Cypack.com.
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.
Hong Oo Baak as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On October 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 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 in hard copy in accordance with Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) was not received by October 29, 2007, however, Respondent’s Response will be considered taking into consideration the receipt of Respondent’s Response in electronic form by the National Arbitration Forum.
An Additional Submission by Complainant was received on
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant has used the well-known mark, WAL-MART since 1962, and owns WAL-MART word mark and marks bearing design (the “Marks”), including the United States federal trademark registration with the registration numbers 1,322,750, 1,783,039, and 2,891,003. Complainant asserts that it is the world’s largest retailer, and that it has stores bearing the Wal-Mart trademark in several countries including the U.S., Mexico, Canada, and China, and that it has also registered its famous mark across the world for a host of goods and services in countries throughout Africa, Asia, Australia, North and South America, and Europe.
2. Complainant asserts that the Respondent’s
domain name in dispute, <wall-mart.com>, is confusingly
similar to Complainant’s
3. Complainant asserts that Respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint. Complainant asserts that Respondent has no rights in the WAL-MART Mark, and that Respondent does not commercially use the term “WAL-MART” in the course of trade in connection with a bona fide offering of goods or services and that the Respondent is not commonly known by the domain name.
Also, the Complainant asserts that Respondent is not making a legitimate noncommercial or fair use of the domain name. Complainant asserts that Respondent does not offer any services on its web pages, but merely diverts traffic to Complainant’s competitors and disrupts Complainant’s business.
4. Complainant asserts that Respondent’s registration of the domain name should be considered as having been registered and being used in bad faith.
Complainant asserts that it is likely that Respondent purposely registered and uses the domain name to prevent Complainant from registering the domain name thereby allowing Respondent to illegally divert Complainant’s would-be customers to competitors’ websites for Respondent’s benefit.
Complainant asserts that Respondent registered the domain name for the purpose of disrupting Complainant’s business.
Complainant asserts that Respondent is using the domain name with the intention of gaining commercially by attracting Internet users that confuse the site as affiliated with, or sponsored by, Complainant.
Complainant asserts that Respondent registered the domain name with actual or at least constructive knowledge of Complainant’s WAL-MART Mark due to Complainant’s registration of the Mark with the USPTO.
1. Respondent contends that Complainant’s Mark is “WAL-MART,” and not “wall-mart,” and therefore, it is not confusingly similar to the domain name. Further, Respondent contends that Complainant’s Mark was not widely recognized and that Respondent had no knowledge of Complainant’s trademark at the time of registration of the domain name.
2. Respondent contends that a domain name should be granted to whoever first registered it therefore Respondent as the first person to register the domain name, has the legitimate interest. Respondent also contends that it is conducting a lawful Internet business by using the domain name temporarily before using it as brick materials site and that even the expression of intent to use a domain name may grant the registrant a legitimate interest.
3. Respondent contends that the domain name was not registered and used in bad faith on the grounds that he did not register the domain name for the purpose of transferring it to Complainant or a third party at an exorbitant price, nor has Respondent ever proposed a sale to Complainant.
C. Additional Submissions by Complainant
1. Complainant contends that the domain name is confusingly similar to Complainant’s WAL-MART Mark in that the Respondent admitted that the Complainant’s Mark and the domain name are similar.
2. Complainant contends that Respondent’s conclusory statements in its Response, regarding a brick material site and a “First Come, First Served Rule,” do not establish rights or legitimate interest in the domain name.
3. Complainant contends that Respondent’s election not to propose a sale of the domain name does not negate a finding of bad faith registration and use of the domain name.
1. Complainant has continuously used the Mark, WAL-MART for its business, since 1962.
Complainant filed for the registration of WAL-MART and
Design with USPTO on June 25, 1984 and the mark was registered with USPTO as
registration number 1,322,750 on February 26, 1985. Complainant filed for the registration of
WAL-MART mark with USPTO on
3. The disputed domain name <wall-mart.com> was registered on December 10, 2001.
4. The website operated at the domain name consists of a search engine and a series of links to categories of search terms, which trigger links to Complainant’s competitors.
5. Among the search terms are categories of products sold and services offered by Complainant including “Walmart Online Shopping,” “Walmart Superstore,” “Walmart Clearance,” “Walmart Jobs,” “Walmart Photos,” “Walmart Tires.” Clicking the links above divert Internet users to websites of Complainant’s competitors.
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 domain name shows
a little difference in spelling by having an extra letter “l” in the “Wal” part
of the Mark, WAL-MART. A slight
difference in spelling between the Mark and the domain name does not reduce the
confusing similarity. See, e.g. Blackboard, Inc. v. Cupcake
Patrol D2000-0811 (WIPO Oct.
17, 2000); Putnam, LLC v. SZK.com, FA
624820 (Nat. Arb.
Respondent also admits in his Response that there is similarity between the Mark and the domain name.
Accordingly, the Panel finds that Policy ¶4(a)(i) has been satisfied.
Paragraph 4(c) of the Policy sets out circumstances, without limitation, which can establish the holder’s rights to or legitimate interests in the domain name. These circumstances are as follows.
(i) before any notice to the domain name holder of the dispute, the holder's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the domain name holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although Respondent asserts that he prepared for using the domain name by registering <wall-mart.com> and planning to use it for a brick site, the registration of, and the plan to use the domain name are not sufficient to prove the use of or demonstrable preparations to use, the domain name.
Even if Respondent’s
use of the domain name before any notice from Complainant is acknowledged, such
use does not constitute bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) as Respondent has
been using the domain name for the purpose of redirecting Internet users who have misspelled
Complainant’s Mark to the websites of
Complainant’s competitors, nor is it a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). See
Morgan Stanley v.
In addition, Respondent failed to show that it has been commonly known by the domain name.
that that it has the right to use the domain name based on the “first come, first
served” rule, however the only conceivable “first come, first served” notion in
domain name law applied to the registration of domain name comprising common,
generic words, not domain names that are confusingly similar to well-known
trademarks. See e.g., Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO
While the overall burden of proof for Policy 4 a(ii) rests on Complainant, the failure by Respondent to demonstrate that he comes within Paragraph 4(c) can assist the Panel in deciding whether Complainant has discharged the onus of proof. See Wal-Mart Stores, Inc. v. Lars Stock, D2000-0628 (WIPO Aug.11, 2000)
Considering all the statements made and evidence submitted, the Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Taking into consideration the fact that Complainant is one of the world’s largest retailers and has been using the Mark since 1962, that the domain name is a common misspelling of the well-known Mark and the fact that the site at the domain name consists of a series of links to categories of search terms, which trigger numerous links using Complainant’s trademark WAL-MART to be connected to websites of Complainant’s competitors, Respondent registered the Mark with intent to induce Internet users to Respondent’s site using the domain name. This typosquatting is evidence of bad faith. See Yahoo! Inc. v. Data Art Corp., D2000-0587 (WIPO Aug. 11, 2000), see also Compagnie Generale des Etablissements Michelin v. Collazo, D2004-1095 (WIPO Feb. 8, 2005).
Respondent’s use of
the domain name to operate a search engine website that features links to Complaint’s
competitors’ websites strongly indicates that Respondent registered the domain name
to disrupt Complainants business. Specifically,
the fact that Respondent’s website includes search terms related to Complainant’s
business is sound evidence that Respondent’s actions were targeted to Complainant.
Morgan Stanley v.
Accordingly, the Panel finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wall-mart.com> domain name be TRANSFERRED from Respondent to Complainant.
Hong Oo Baak, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum