National Arbitration Forum

 

DECISION

 

Wal-Mart Stores, Inc. v. Sergio Cabrera

Claim Number: FA1008001344053

 

PARTIES

Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Scott E. Thompson, of Greenberg Traurig, LLP, New York, USA.  Respondent is Sergio Cabrera (“Respondent”), Arkansas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <walmartvendor.com> (the “Domain Name”), registered with TUCOWS, INC.

 

PANEL

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.

 

Christopher Gibson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2010.

 

On August 31, 2010, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <walmartvendor.com> domain name is registered with TUCOWS, INC. and that the Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@walmartvendor.com by e-mail.  Also on September 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 20, 2010.

 

Complainant’s Additional Submission was received on September 27, 2010 in compliance with Supplemental Rule 7. 

 

Respondent’s Additional Submission was received on October 1, 2010 in compliance with Supplemental Rule 7.

 

On October 10, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.

 

Preliminary Issue: Who is the Respondent?

 

In the instant proceedings, Complainant has named Sergio Cabrera as the Respondent.  However, the Respondent has asserted that Sergio Cabrera is not the owner of the Domain Name.  In its Response, Respondent argues that the Domain Name is not owned by Sergio Cabrera, but is owned by Cumorah.  Respondent states that in 2001 it registered the Domain Name, but that it transferred its ownership to Cumorah around November 2008.  In its Additional Submission, Complainant argues that Respondent’s contentions are incorrect because the WHOIS information reflects that “Sergio Cabrera” is the registrant of the Domain Name.  Further, Complainant submits evidence to show that Respondent is the registered agent and sole officer of Cumorah and thus controls the Domain Name either way. 

 

Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Here, the Panel finds that Complainant has presented sufficient evidence to show that Sergio Cabrera is the Registrant of record for the Domain Name (the Panelist also re-checked the Whois records as of the date of this decision) and that, in any event, the Domain Name is controlled either by Cabrera or an entity that Cabrera controls.  The Panelist thus chooses to proceed with the instant proceedings.

 

RELIEF SOUGHT

The Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

Trademark Rights: Complainant owns and has used the trademarks, WAL-MART and WALMART, since 1962, including owning a number of United States federal trademark registrations including numbers 1,322,750; 1,783,039; 2,891,003 and 3,612,345 (referred to hereafter as the “WALMART marks”). Many UDRP panels have found the Complainant’s marks to be famous. Complainant states that it is the world’s largest retailer, with approximately 4,275 stores throughout the United States and an additional 3,720 retail units operating outside the United States.

 

Background: Complainant asserts that it learned of the Respondent’s Domain Name in or about early September 2003. The content of the related website at that time featured an “under construction” page, announcing the Respondent’s intention to provide services under the name <walmartvendor.com> and specifying that such services would target vendors seeking to do business with the Complainant. Complainant through its counsel sent a demand letter to the Respondent on September 5, 2003, informing the Respondent of the Complainant’s rights in the WALMART marks and that the registration and use of the Domain Name constituted an illegal use.  Complainant states that for a number of years the Domain Name did not resolve to an active website.  However, in July 2010, the Complainant discovered that the Respondent had begun using the website to which the Domain Name resolves to actively conduct business, linking to the Complainant’s official websites and those of other businesses, including <bizjournal.com>.

 

Complainant maintains that no specific business names are given on the Respondent’s website other than the WALMART marks, and users are led to believe that the website is authorized or sponsored by the Complainant. A small, difficult-to-read disclaimer appears at the bottom of the page.  Respondent’s website also uses a color scheme and layout that is similar to the Complainant’s websites. The Respondent’s website directly competes with Complainant’s website at <walmartstores.com> to offer information to potential vendors. On May 6, 2010 and during a subsequent series of emails, the Complainant informed the Respondent that his use of the Domain Name infringed on the WALMART marks and requested that he discontinue this use.  Respondent has refused to comply.

Confusing Similarity: Complainant asserts that the Domain Name, <walmartvendor.com>, is confusingly similar to Complainant’s WALMART marks, as it incorporates the entirety of the Complainant’s distinctive and well-known marks. The addition of the generic term, “vendor,” does not negate the confusing similarity. Instead, using a term that is associated with the Complainant’s business is more likely to cause consumer confusion.

No right or legitimate interests: Complainant asserts that Respondent should be considered as having no rights or legitimate interests in the Domain Name. The Respondent is not known by the Domain Name and the Complainant has never consented to the Respondent’s use of its marks.  The Respondent’s use of the Domain Name for the purpose of trading off on the Complainant’s goodwill in the WALMART marks gives rise to no rights or legitimate interests. Respondent’s use of the Domain Name to sell goods and services of both the Complainant and other parties is not a bona fide offering of goods or services.  Also, Complainant asserts that to the best of its knowledge, Respondent is not making a legitimate noncommercial or fair use of the Domain Name.  

Registered and used in bad faith: Complainant asserts that the Domain Name was registered and has been used in bad faith. Respondent is located in a jurisdiction in which the Complainant has trademark rights that pre-date registration of the Domain Name. Therefore, Respondent has actual or at least constructive knowledge of the Complainant’s well-known WALMART marks. The mere fact that Respondent registered the Domain Name incorporating these famous trademarks is enough to give rise to an inference of bad faith. Such knowledge of the Complainant’s trademark rights and willingness to blatantly profit from them underscores Respondent’s bad faith registration and use of the Domain Name. In particular, Respondent is diverting customers from the Complainant’s legitimate website by providing directly competing services. Respondent profits by offering services to confused vendors in competition with the Complainant’s free services, and also through links to third-party websites. By intentionally creating a likelihood of confusion with the Complainant’s WALMART marks, Respondent is unlawfully capitalizing on the name recognition and goodwill of those marks to divert Internet traffic to the Respondent’s site. Finally, t Respondent’s use of a disclaimer on its site does not mitigate the bad faith of otherwise intentionally causing confusion.

B. Respondent

Ownership: Respondent first states that he is not the owner of the Domain Name. Instead, the Domain Name is owned by Cumorah Marketing Systems, LLC (“Cumorah”). At the time the Domain Name was obtained, Respondent states that he did own it but has since transferred ownership to Cumorah in November 2008.

 

Background: Respondent claims that he obtained the Domain Name for the purpose of establishing a source of information for vendors and suppliers of Wal-Mart Stores, who would be moving to Northwest Arkansas after Complainant’s announcement that it would require suppliers to have local representation near Complainant’s headquarters in Bentonville, Arkansas. Respondent’s purpose in obtaining the Domain Name was to have an Internet-based site where vendors could go for assistance and information to assist in their relocation activities to this area, including logistical and helpful information regarding the area, real estate, hotels, restaurants, and the support of local merchants, necessary to facilitate their moves.

 

According to Respondent, the services provided through his website evolved to include assistance in navigating the process of becoming a Wal-Mart vendor. This was due to the perceived need for such services, which was reflected in comments made to Respondent on his website. These comments allegedly include: “I contacted you because Wal-Mart’s web page is so confusing” or “Wal-Mart’s web page is not user friendly”, or “I have been trying to go through Wal-Mart’s web page process but it is complicated and yields no results.” These comments and others made it clear to Respondent that his website would not and did not create any confusion in the market place, nor competed with Complainant’s web pages as Complainant has alleged. From inception, and after the first communication with the Complainant’s counsel, Respondent has gone to great lengths to make sure that all those who contacted his website were aware that it is not affiliated with or sponsored by Complainant. Respondent states that his website makes its purposes clear through its content and disclaimer notices. The language and content is factually and unambiguously different than that which appears on Complainant’s web pages.

 

Estoppel or Waiver; Respondent contends that the Complainant’s failure to act creates estoppel. In particular, Respondent argues that Complainant was aware of his use of the Domain Name since 2001. By its actions and inaction, Complainant led the Respondent to believe that he had the right to use the Domain Name.

 

According to Respondent, Complainant was aware of the Respondent’s use of the Domain Name from the very beginning, since 2001. However, Complainant did nothing to contact the Respondent prior to March 2003 to express any concerns. The Complainant’s allegations insinuate that it did not actively pursue the present Complaint because the Domain Name or web site was “dormant.” However, the credibility of this assertion should be dismissed because it is contradicted by Complainant counsel’s words as they appear in a letter sent to Respondent dated March 16, 2004. Respondent alleges there were various communications between the parties. Although Complainant claims it could not contact the Respondent, the Respondent denies this. Respondent never changed his telephone number or mailing addresses at home or at work. Notwithstanding this, the Complainant failed to pursue any protective action of its alleged rights and this created a situation of detrimental reliance by the Respondent.

 

Respondent asserts that there were telephone communications between him and Complainant’s counsel, and these communications led Respondent to firmly believe that the Complainant’s allegations were unfounded and without factual or legal basis. Because of these communications and the Complainant’s failure to follow up, Respondent was led to believe that Complainant’s counsel efforts were more for purposes of harassment and intimidation rather than to resolve any alleged concerns that the Complainant might have had.

 

Respondent offers the language in the March 16, 2004 letter from the Complainant’s counsel where, according to Respondent, Complainant’s counsel acknowledges a promise he had made to the Respondent during an earlier telephone conversation and explains the unique situation that “some time before filing an action I have defended your intent to my client and described you as a local man who may be willing to amicably resolve this issue.”  In the letter, Complainant’s counsel states that “I assure you that Wal-Mart is only protecting its trademark rights and will choose the originally intended legal action over any hefty payment for this particular Domain name.” Counsel then asked the Respondent to contact him “with an answer to this offer. If you choose not to cooperate then Wal-Mart is likely to take other less rewarding actions to prevent further use of this Domain Name.” Shortly after receiving this letter, Respondent contacted Complainant’s counsel. During these communications there were further discussions as to the value of the Domain Name in view of Respondent’s already incurred expenses. Respondent asked Complainant’s counsel for a definitive answer one way or another. From 2004, however, Respondent asserts that he never heard from the Complainant until May 2010.

 

Consequently, due to Complainant’s failure to act or follow through, on or around March of 2004, Respondent began to actively pursue the use of the Domain Name and its website to do business with prospective vendors. Prior to that time, Respondent had not expended a considerable amount of time or financial resources to develop the site. However, shortly thereafter, Respondent explained to the Complainant’s counsel his intended plan to use of the Domain Name and website. In fact, during one of the conversations, the Respondent asserted his claim to rightfully and legally use the Domain Name and his intention to continue the use and develop the Domain Name to operate a business that would not in any way be in conflict with or confusing to Complainant’s customers and suppliers. Respondent also discussed with Complainant’s counsel that the Respondent’s site would not conflict, criticize, contradict or mislead, but that its intent was to improve the vendor’s ability to do business by assisting the vendor community. To these assertions, Respondent never received a response or communication from the Complainant.

 

In sum, Respondent asserts that it relied on the communications with the Complainant’s counsel, and this reliance led the Respondent, for a period of six years, into believing that Complainant had no issues regarding the Domain Name and connected website, and to invest a considerable amount of time and financial resources in developing the site. Consequently, Complainant should be restrained, after so many years of having had notice of the Respondent’s use and intentions regarding the Domain Name, from asserting that it never gave up any alleged rights it might have had. Complainant’s silence for so many years should act, if nothing else, as a waiver of any rights to restrict the Respondent from his use of the Domain Name. The Respondent should, at the very least, be compensated for the time and resources expended, caused by such detrimental reliance because the Domain Name is worth more now than when it was initially purchased by the Respondent.

 

Not identical or confusingly similar: Respondent asserts that the Domain Name is not nearly identical or confusingly similar to the Walmart marks. Respondent maintains that the content of his site is specifically designed to avoid confusion or misunderstanding by the Complainant’s current or potential customers or suppliers. Respondent’s site is not similar in any way to Complainant’s site. His site emphasizes the service to be provided for the benefit of vendors or potential vendors. The pictures placed by the Respondent on his site represent the niche served by his business activities.  Furthermore, contrary to Complainant’s allegations, Respondent does not charge or earn any income from any links on its site to the Complainant’s or any other business’ web pages. Many potential vendors and in some cases, current vendors, contact the Respondent’s site after their frustration trying to navigate, find or understand the information on Complainant’s web site. When these potential vendors click on the Respondent’s site they do it under the understanding that the Respondent’s site acts as a consultant and is not affiliated with or sponsored by Complainant. Additionally, to prevent any misunderstanding, in all initial communications to callers or electronic mailers, Respondent always informs them of this fact.

 

Rights and Legitimate Interests: Respondent contends that it has a right and legitimate interests in the Domain Name. Respondent purchased the Domain Name in 2001. According to Respondent, a Wal-Mart vendor cannot be identified by any other name. Consequently, use of <walmartvendor.com> is strictly for purposes of differentiating vendors who may sell to other retailers. Respondent asserts that his right to use the Domain Name came from the legitimate use of it. The average prospective vendor wanting to do business with Complainant knows how to read and is typically well informed. Once they arrive at Respondent’s site, as stated above, the information contained therein is clear as to the service provider and the content states there is no affiliation with or sponsorship by the Complainant.

 

If a vendor is seeking, not information on a process required by the Complainant, but assistance to deal with that process itself, this assistance is not offered by the Complainant. Instead, the market niche created by this demand is different from and in no way competes with or causes confusion with Complainant’s offerings. In addition, the fees charged by Respondent also serve to differentiate his services from those offered by the Complainant. For over ten years, Respondent has been doing business and has become known by the Domain Name. Walmartvendor.com is in fact the name, from inception, by which Respondent is commonly identified. In all of its advertising and marketing venues, Respondent has spent a considerable amount of funds promoting the Domain Name. Finally, the implied consent stemming from the Complainant’s inaction should support a finding that Respondent has acquired a legitimate interest in the Domain Name.

 

Good faith: Respondent argues that it registered and has used the Domain Name in good faith.  Through his response above, Respondent has attempted to explain his actions and intent regarding the registration and use of the Domain Name in good faith. Additionally, after communicating with Complainant’s counsel on or around June 1, 2010, in order to demonstrate good faith, Respondent made changes to his site so as to address the Complainant’s concerns of any potential confusion. This was done despite the fact that there are no, nor has there ever been, any similarities between Complainant’s site and Respondent’s site. Furthermore, any links provided on Respondent’s site are strictly for informational purposes. Complainant has offered no evidence to sustain its allegation that the Respondent’s links to third-party web pages are revenue producing.

 

Although Complainant alleges that the Respondent’s site competes with the Complainant’s web pages, on the contrary, there is no evidence or factual support provided by the Complainant to sustain this allegation. Respondent’s business activity is solely directed to offering consulting services similar to those offered in other commercial venues, and which is accepted practice when a process, such as dealing with the Federal Government, is complicated. The supplier does not want to spend the time or resources to deal with the process, but instead chooses to hire a consultant to help them through the “maze.” In no way do the services offered by Respondent compete with any services being offered by Complainant.

 

In conclusion, Respondent contends that justice requires that the Panel decline Complainant’s request to issue a decision that the Domain Name registration be transferred to Complainant.

 

C.      Complainant’s Additional Submission

In the first section of the Response, Respondent alleges that he is no longer the owner of the Domain Name, but has transferred it to Cumorah. This assertion by Respondent appears to be incorrect. Complainant has submitted evidence that, according to the Whois database, Respondent was indeed the listed registrant of the Domain Name at the time the Complaint was filed. Furthermore, Complainant has submitted evidence that Respondent appears to be the registered agent and sole officer of Cumorah. The ownership statement by Respondent is the first of several red herrings intended to mislead the Panel.

 

Although Respondent repeatedly asserts in the Response that he relied to his detriment on various omissions or representations of Complainant, none of these assertions provide any basis on which any reasonable party could have relied to believe it could build a business using the Domain Name without future challenge from the Complainant. The Respondent states that he relied on conversations in which he found Complainant’s arguments for its rights unpersuasive, as well as the fact that Complainant did not bring an action to regain control of the Domain Name after its counsel had stated that it may do so. As a matter of common sense, these are not assertions of anything, let alone representations that Respondent could develop a business through the infringing Domain Name. Complainant’s counsel’s September 5, 2003 and March 16, 2004 letters explicitly set forth the fact that the Domain Name improperly incorporates Complainant’s registered trademarks, he has no right or permission to do so, and this action will not be tolerated. The fact that Complainant did not move forward with legal action immediately following these letters to Respondent provides no basis on which a party could reasonably rely under these circumstances.

 

Additionally, Respondent alleges that Complainant was aware of the Domain Name beginning in 2001. This is based on the following statement by Complainant’s counsel in its March 16, 2004 letter to Respondent that he was “aware that you have owned this domain name for almost 3 years and your site is no further along than when I first discovered you.” According to Complainant, this sentence is blatantly misconstrued by Respondent. As shown in the actual letter, the Respondent has omitted the words, “I also am,” making the phrase “… I also am aware that you have owned this domain name for almost 3 years and your site is no further along than when I first discovered you.” This letter plainly does not state that Complainant “has been aware,” but rather that he is aware of the 2001 registration, which would have been easily found at any point in the Whois database. Nothing in this suggests that Complainant was aware of the Domain Name at any point significantly before its counsel’s first cease and desist letter, sent September 5, 2003.

 

Respondent further alleges that he relied on communications in which Complainant’s counsel “initially informed” Respondent that it could use the Domain Name as long as a disclaimer was added.  Complainant’s counsel has no knowledge of such a communication, and the assertion directly contradicts the explicit language of the two letters, which are the only items that have been offered as evidence. The Respondent does not specify how this communication was made, or the time period in which it was made. Additionally, in his discussion of ongoing communications with Complainant’s counsel, Respondent’s use of the word “initially” to describe any representation would seem to imply that any offer made was either rescinded or never agreed upon. This alleged representation is unsubstantiated, and even if it were to be accepted as fact, does not appear to be a representation on which Respondent could have reasonably relied.

 

Respondent states that he must use Complainant’s Walmart marks in order to communicate the nature of his services to potential clients. However, Respondent makes clear in the response that these services were not the reason for the selection of the Domain Name, but rather, Respondent began offering such services as a result of comments made by visitors to his website, presumably in reaction to Complainant’s marks contained in the Domain Name. As Complainant’s counsel suggests in its March 16, 2004 letter, there were many domain names available that could describe the Respondent’s planned services. Respondent’s admission that it developed its services to focus on the process of becoming a vendor for Complainant proves the inapposite nature of the Domain Name and the bad faith in its registration. It also shows that consumers were confused as to the nature of services being provided, arriving at WalmartVendor.com likely assuming that it was sponsored by Complainant. The Respondent’s rejection of Complainant’s offer to purchase to the Domain Name in March

2004, for an amount well in excess of Respondent’s costs incurred up until that point, is further evidence of bad faith.

 

Respondent asserts that Complainant did not attempt to settle the matter, though this is plainly contradicted by the offer contained in the March 16, 2004 letter. This offer shows both Complainant’s good faith attempt to resolve the dispute in a manner that would cause no harm to Respondent, as well as the Respondent’s bad faith intentions to hold on to the Domain Name in hopes of selling it back to Complainant at an inflated price. The Panel has held that the offer to sell a domain name for an amount that exceeds the usual registration fees and does not provide documentation in support of a higher amount can be evidence that a registrant has registered and used a domain name in bad faith.

 

D.    Respondent’s Additional Submission

Respondent replies that regardless of Complainant’s attempts to obfuscate issues, although Sergio Cabrera is the registrant of the Domain Name, the rights to the Domain Name were transferred by Respondent to Cumorah by a confidential agreement. The Complainant is attempting to place Respondent in bad light by alleging this transfer has not occurred. Respondent attests that this transfer transpired. Respondent has never made any references to the contrary and Complainant’s allegations constitute an attempt to create a distraction from the real issues to be considered by the Panel.

                              

Respondent contends that he had a reasonable basis on which to believe that the Complainant had acquiesced to the Respondent’s right to use the Domain Name. There is no ambiguity to the fact that, if not in 2001, then, at the very least by 2003, the Complainant was well aware of the Respondent’s use of the Domain Name and had knowledge of Respondent’s disclosed intentions to continue to use it for a particular business format. Furthermore, the fact that at least six months had lapsed between September 2003 and the Complainant’s followed-up letter of March 2004 is strong evidence in favor of the Respondent’s claim that he relied on the Complainant’s acquiescence to use of the Domain Name. Respondent believed then, and continues to believe, that he was not infringing on the Complainant’s alleged rights. The Complainant’s inaction strengthened that belief and assertion. Considering the Complainant’s threatening language in those letters, and the fact that the Complainant is one of the largest corporations in the world, there is no reason why Respondent would not have complied with the cease and desist requests unless Respondent had in fact relied on Complainant’s acquiescence.

 

Additionally, Complainant’s comments regarding the time of discovery of the Respondent’s use of the Domain Name in September 2003 are disingenuous when Complainant’s states in its first letter “your site is no further along than when I first discovered you.” In this quote, Complainant confirms an earlier time of discovery than September 2003. Respondent re-asserts that, besides the letters, there were several telephone conversations with Complainant’s legal counsel. If the Respondent had the financial resources, he could prove by telephone records how many and when those conversations took place. The language in Complainant’s letters is an affirmation that indeed there were more than a couple of communications and that Respondent relied on those communications and the Complainant’s inaction as further assurance that Respondent had the right to use the Domain Name.

 

Finally, Respondent asserts that he has a right and an acquired legitimate interest in the Domain Name. The Domain Name was a qualifier for those who would be served by the Respondent’s business. It is the Respondent’s strong belief that he had a right to use the Domain Name, which belief was confirmed by Complainant’s inaction. Moreover, if the Complainant had followed up on its threats to pursue legal action, this would have saved Respondent from the additional time and expense he has incurred developing his site. Complainant has failed to show bad faith on the part of the Respondent. Respondent never contacted, nor ever had the intention of contacting, the Complainant to ask for any payment for the Domain Name. If there is such thing as a statute of limitations with regard to use of the Domain Name, Respondent respectfully requests the Panel that it be applied in this case, in addition to just and fair compensation for the expenses the Respondent has incurred, not only developing his site, but also with respect to the Complainant’s misguided and delayed claim.

 

FINDINGS

Complainant, Wal-Mart Stores, Inc., is the world’s largest retailer.

 

Complainant has continuously used the marks, WALMART and WAL-MART, for its business since 1962. These marks are famous within the United States and in several other countries.

 

In addition to operating retail stores, Complainant also owns and operates the domain names and related websites at <walmart.com> and <walmartstores.com>. 

The Domain Name <walmartvendor.com> was registered on August 23, 2001. The website attached to the Domain Name consists of web pages devoted to the Respondent’s business, which provides consulting services for the process of becoming or being a Walmart vendor and selling to Walmart.

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant owns very strong trademark rights in its WALMART and WAL-MART marks and has used them in the United States for a very long period.

 

Complainant argues that the Domain Name, <walmartvendor.com>, is confusingly similar to its WALMART marks.  Complainant notes that the Domain Name incorporates its WALMART mark in its entirety and adds the generic term “vendor,” which does not sufficiently distinguish the Domain Name from the Complainant’s marks. The generic term “vendor” relates to commercial services associated with Complainant’s own business and therefore does not distinguish the Domain Name from the WALMART marks. Accordingly, the Panel finds that Respondent’s Domain Name is confusingly similar to Complainant’s marks pursuant to Policy ¶4(a)(i), particularly given the distinctiveness and fame of those marksSee Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”).

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

Rights or Legitimate Interests

 

The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to respondent to show that it does have rights or legitimate interests in a domain name).

 

In its Complaint, the Complainant has met its burden to make out a prima facie case. Complainant submitted that Respondent is not commonly known by the Domain Name and the Whois information supplied by Complainant identifies “Sergio Cabrera” as the registrant of the Domain Name. In addition, references on Respondent’s website are to Complainant’s WALMART marks and Complainant has not authorized Respondent to use its well-known WALMART marks. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized the respondent to register a domain name containing its registered mark). Moreover, Complainant submitted that Respondent initially used the Domain Name to resolve to an inactive “under construction” website. More recently, Respondent’s Domain Name resolved to a site that offers Internet users information on becoming a vendor for Complainant and that displays third-party links to Complainant’s official website and to other unrelated businesses. Complainant argued that Respondent earns money from providing services to the visitors of its website and from the Internet users it diverts to other unrelated businesses. Further, Complainant maintained that it already provides similar vendor services to the general public for free through its own website. See e.g., State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). Finally, Complainant argues that there are other domain names available that do not incorporate its WALMART marks, which would allow Respondent to carry out its business intentions.

 

In response to these points, Respondent contends that he had a reasonable basis on which to believe that Complainant had acquiesced to his right to use the Domain Name. Respondent asserts that he has acquired a right and legitimate interest in the Domain Name through its use over a period of more than six years following open communication with Complainant concerning the Domain Name and Respondent’s intended purpose for it. Respondent has submitted in its Response and Additional Submission that Complainant knew about Respondent’s registration and use of the Domain Name since at least September 2003, when Complainant’s counsel sent a letter to Respondent. Respondent indicates that, as stated in that letter, Complainant asked Respondent to cease use of the Domain Name and to transfer it to Complainant.  However, other than a second letter in March 2004 and several phone calls (the content of which is disputed) during that same period, Complainant took no further action for a period of six years until earlier this year in May 2010.  

In addition, Respondent has rebutted a number of the specific points of concern raised by the Complainant.  Respondent claims that for over ten years, he has been doing business and has become known by the Domain Name. Importantly, there is no dispute that Respondent does operate a bona fide business, which distinguishes this case from many others. Respondent’s business activity involves offering consulting services for the process of becoming or being a Walmart vendor and selling to Walmart.  These services are offered to those who want hire a consultant to help them through the process of becoming a vendor. The Respondent has specifically denied that the services he offers compete with any services specifically being offered by Complainant. Once a potential vendor arrives at Respondent’s site, the information contained therein, including a disclaimer, indicates that there is no affiliation with or sponsorship by the Complainant, and Respondent stated that this non-affiliation is also made clear in initial contacts with clients or potential clients. Furthermore, any links provided on Respondent’s site are for informational purposes, and Respondent has denied that links to third-party web pages are revenue producing.  Finally, the fees charged by Respondent serve to differentiate his services from those offered by the Complainant.  In sum, Respondent asserts that it relied on the communications with the Complainant’s counsel and Complainant’s inaction over a period of years of at least six years, and this reliance led Respondent into believing that Complainant had no issues regarding the Domain Name and connected website, and to invest time and financial resources into his website.

The Panel finds that although the Parties dispute the meaning of the two letters, dating from September 2003 and March 2004, as well as the content of other communications between them during that period, it is apparent to the Panel that Complainant gave clear warning to Respondent at that time. If Complainant had acted diligently to follow-up and enforce its trademark rights then – for example, through use of the UDRP procedure – Respondent’s registration of the Domain Name, which was made with obvious knowledge of the Complainant and its WALMART marks, would possibly have been terminated and the Domain Name transferred to Complainant. However, the troubling facts in this case are that Respondent continued to use the Domain Name and associated website for a significant period of time following those exchanges, in open and obvious disregard of Complainant’s rights. Indeed, to Respondent’s arguments in this regard, Complainant can only respond that it never acquiesced to Respondent’s registration and use of the Domain Name; however, Complainant has given no reasonable explanation for why it delayed any further action for a significant period and was not more diligent in the prosecution of its trademark rights. Moreover, Respondent has shown that he used a proper disclaimer and acted consistently in indicating his non-affiliation with Complainant. Therefore, what might have been considered a bad faith registration under circumstances where Respondent initially had no right or legitimate interest in the Domain Name has ripened, over time, into use of the  Domain Name by Respondent in a manner that has given rise to some right or legitimate interest that is cognizable under the Policy. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defence in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”); see also Advanced Drivers Educ. Prods. & Training, Inc. v. MDNH, Inc., FA 567039 (Nat. Arb. Forum Nov. 10, 2005) (finding that the disputed domain name was not used in the trademark sense, but was “a descriptor of the site’s intended content or theme,” and therefore that complainant failed to prove that Respondent lacked rights or legitimate interests in the disputed domain name).

 

In a slightly different context, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3, indicates the consensus view that:

A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark. See Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903.

While Respondent in the instant case is not a reseller, he does operate a bona fide business that relates exclusively to consulting services in support of vendors who want to do business with Complainant. Moreover, his site has accurately disclosed the non-affiliation between Respondent and Complainant. Thus, I find this to be that extremely rare case where Respondent, through a long period of operation, has established a right and legitimate interest in using a Domain Name that incorporates Complainant’s well-known trademark. However, I make no comment whatsoever on whether or not Respondent’s use of the Domain Name and Complainant’s WALMART marks on its website might otherwise be in violation of relevant United States state or federal trademark laws. I simply conclude that, for purposes of the Policy, paragraph 4(a)(ii), Respondent has established a right or legitimate interest in the Domain Name through its continuous use for his consulting business.

 

Respondent has also requested just and fair compensation for the expenses he has incurred in developing his site.  This request is clearly outside the scope of the UDRP. 

 

Because Respondent has established a right or legitimate interest in the Domain Name, the Panel need not address bad faith under the Policy, paragraph 4(a)(iiii).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

Christopher Gibson, Panelist
Dated: November 8, 2010

 

 

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