Wal-Mart Stores, Inc. v. My-WalMart-Benefits
Claim Number: FA0709001076583
Complainant is Wal-Mart, Inc. (“Complainant”), represented by Jennifer L. Gregor of Foley & Lardner LLP, 321 North Clark Street, Suite 2800, Chicago, IL, 60610. Respondent is My-WalMart-Benefits (“Respondent”), woobang APT Dongcheon-dong,, Gyeongju-si Gyeongsangbuk-do KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mywalmartbenefits.com>, registered with Domainallies.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 12, 2007; the National Arbitration Forum received a hard copy of the Complaint September 13, 2007. The Complaint was submitted in both Korean and English.
On September 26, 2007, Domainallies.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mywalmartbenefits.com> domain name is registered with Domainallies.com, Inc. and that Respondent is the current registrant of the name. Domainallies.com, Inc. verified that Respondent is bound by the Domainallies.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 10, 2007, a Korean language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <mywalmartbenefits.com>, is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent has no rights to or legitimate interests in the <mywalmartbenefits.com> domain name.
3. Respondent registered and used the <mywalmartbenefits.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores, Inc., was established in 1962 and is now one of the world’s largest retailers. Complainant has continuously used the WAL-MART mark in connection with a wide array of discount retail services as well as sales of food, provision of financial services, vision services, vacation planning, and pharmacy services. Complainant currently owns registrations in numerous jurisdictions worldwide including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,322,750 issued February 26, 1985).
Respondent registered the <mywalmartbenefits.com> domain name May 1, 2007, and currently the name resolves to a website containing a commercial search engine and links to various third-parties that would seek to compete with Complainant.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant established rights in the WAL-MART mark through
registration with the USPTO pursuant to Policy ¶ 4(a)(i). See
Respondent’s disputed <mywalmartbenefits.com> domain name is
comprised of Complainant’s WAL-MART mark, omitting the hyphen and adding the
generic top-level domain (“gTLD”) “.com.”
It is well-established that the omission of a hyphen and inclusion of a
gTLD are not relevant in a Policy ¶ 4(a)(i)
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (“[I]t is a well established principle that generic
top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see
also Health Devices Corp. v.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(i), Complainant
must make a prima facie case showing that
Respondent has no rights to or legitimate interests in the disputed domain
name. See VeriSign Inc. v. VeneSign
Respondent failed to submit a Response to the Complaint. Therefore, the Panel presumes that Respondent does not have any rights or legitimate interests in the <mywalmartbenefits.com> domain name. Nonetheless, the Panel considers all the available evidence in the record to determine if the evidence shows under Policy ¶ 4(c) that Respondent has rights to the domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was known by the WAL-MART mark or the <mywalmartbenefits.com> domain name. Complainant avers that it has never granted permission to Respondent to use the WAL-MART mark in any way. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The disputed <mywalmartbenefits.com> domain name resolves to a website containing a commercial search engine and links to various third-parties who would seek to compete with Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in registering and using a domain name that contains Complainant’s protected mark. The <mywalmartbenefits.com> domain name resolves to a commercial search engine and links page, displaying links to various third-parties, many of whom seek to compete directly with Complainant. The Panel finds this use supports findings that Respondent registered and is using the disputed domain name in bad faith as an attempt to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Lastly, the Panel is entitled to presume that Respondent
financially benefits from each Internet user who is misdirected by Respondent’s
website to a competitor of Complainant by earning click-through fees. The Panel finds that this attempt to
commercially benefit from Complainant’s mark through a confusingly similar
domain name is additional evidence of Respondent’s bad faith pursuant to Policy
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mywalmartbenefits.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 19, 2007.
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