Wal-Mart Stores, Inc. v. Wood and Lumber Mart LLC c/o maggie may
Claim Number: FA0805001189987
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Suzanne
Hengl, of Baker Botts L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walmartgiftcard.com>, registered with Enom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2008.
On May 22, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <walmartgiftcard.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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").
13, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 3, 2008
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 July 10, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <walmartgiftcard.com> domain name is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <walmartgiftcard.com> domain name.
3. Respondent registered and used the <walmartgiftcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores,
Inc., is in the business of retail department store services, as well as
offering gift cards redeemable for merchandise at its retail department
stores. Complainant is the largest
retailer with over 3,000 retail outlets in the
Respondent, Wood and Lumber Mart LLC c/o maggie may registered the <walmartgiftcard.com> domain name on February 20, 2005. The disputed domain name resolves to a website displaying third-party hyperlinks, some of which are in direct competition with services offered by 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."
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.
The Panel finds Complainant’s USPTO registration of its WAL-MART mark sufficient for establishing Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the complainant based upon its USPTO trademark registration).
domain name fully incorporates Complainant’s WAL-MART mark, omits the hyphen,
adds the generic phrase “gift card” and the generic top-level domain (“gTLD”)
“.com.” The panel in Oki Data
Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), stated that
“the fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to establish identity [sic] or confusing similarity for
purposes of the Policy despite the addition of other words to such marks.” Furthermore, the panel in Wal-Mart Stores,
Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000), found that the
WAL-MART mark was famous and that the <walmartcanada.com> was confusingly
similar to the famous mark. Additionally,
it is well accepted that gTLDs and hyphens are irrelevant in the evaluation of
the disputed domain name for confusing similarity. See 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). Therefore, the Panel finds Respondent’s <walmartgiftcard.com> domain name is
confusingly similar to Complainant’s WAL-MART mark. See Arthur Guinness Son & Co. (
The Panel finds that Policy ¶ 4(a)(i) has been met.
Initially, Complainant has the burden of proof to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name. However, Complainant can shift this burden to Respondent by establishing a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Failure to respond by Respondent furthers this presumption against Respondent. The Panel finds that Complainant has demonstrated a prima facie case under Policy ¶ 4(a)(ii); moreover, because Respondent failed to respond, the Panel chooses to examine all of the evidence under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”).
Respondent’s <walmartgiftcard.com> domain name resolves to a website displaying competing third-party hyperlinks, from which the Panel infers that Respondent is receiving click-through fees. The panel in eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001), stated that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use. Likewise, this Panel finds that Respondent’s diversionary use of Complainant’s famous WAL-MART mark for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant also asserts that Respondent is not licensed or otherwise authorized to utilize its famous WAL-MART mark for the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), the panel found no rights or legitimate interests 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. Based on the WHOIS information of “Wood and Lumber Mart LLC c/o maggie may,” the Panel infers that Respondent attempted to have a legitimate use of the disputed domain name by picking a company name that, when abbreviated, resulted in Complainant’s famous WAL-MART mark. However, the Panel is not convinced that Respondent is commonly known by the disputed domain name based on a lack of response to the Complaint and lack of any other legitimate evidence in the record to prove otherwise. The panel in G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003), stated that “[d]ue 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>.” Similarly, the Panel finds that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests in the <walmartgiftcard.com> domain name pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Complainant has met Policy ¶ 4(a)(ii).
Respondent is attempting to divert Internet users searching
for Complainant and Complainant’s products, specifically WAL-MART gift cards,
to its own website and other competing websites. In Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000), the panel found
that the respondent had diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii). The Panel finds that Respondent registered
and uses the <walmartgiftcard.com>
domain name in bad faith by disrupting Complainant’s business and attracting
Internet users to Complainant’s competitors in breach of Policy ¶
4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that the respondent registered and used the domain name
<eebay.com> in bad faith where the respondent has used the domain name to
promote competing auction sites); see
The Panel also finds that Respondent registered and uses the confusingly similar disputed domain name in an attempt to confuse Internet users as to Complainant’s affiliation with its resolving website. Respondent is engaging in this behavior to attract Internet users to the competing resolving website for its commercial gain from the click-through fees. In H-D Michigan, Inc. v. Petersons Automotive, FA 135608 (Nat. Arb. Forum Jan. 8, 2003), the panel found that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness. Likewise, the Panel finds that Respondent registered and uses the <walmartgiftcard.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attracting Internet users to the resolving website for Respondent’s commercial gain. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also 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 Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
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 <walmartgiftcard.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 24, 2008
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