Wal-Mart Stores, Inc. v. NA / Rajesh Kumar Kadian
Claim Number: FA1110001410741
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is NA / Rajesh Kumar Kadian (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bhartiwalmartstore.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2011; the National Arbitration Forum received payment on October 24, 2011.
On October 12, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <bhartiwalmartstore.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2011 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@bhartiwalmartstore.com. Also on October 24, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <bhartiwalmartstore.com> domain name is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <bhartiwalmartstore.com> domain name.
3. Respondent registered and used the <bhartiwalmartstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores, Inc., is the owner of the WAL-MART mark. Complainant uses its mark in connection with the advertising, marketing, and operation of discount retail department and warehouse stores and other types of related products and services. Complainant has multiple registrations for the WAL-MART mark (e.g., Reg. No. 1,322,750 registered February 26, 1985) with the United States Patent and Trademark Office (“USPTO”).
Respondent, NA / Rajesh Kumar Kadian, registered the disputed domain name on April 16, 2010. The <bhartiwalmartstore.com> domain name previously resolved to a website which appeared to be a test for a retail sales website which offers no links or products and states that it is under construction. The <bhartiwalmartstore.com> domain name currently resolves to an inactive webpage.
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.
Complainant contends that it has rights in the WAL-MART mark. The registration of a mark with a federal trademark authority, regardless of the locations of the parties, is sufficient to establish rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has several registrations for the WAL-MART mark (e.g., Reg. No. 1,322,750 registered February 26, 1985) with the USPTO. The Panel finds that Complainant’s registration of its mark with the USPTO confers in Complainant rights to the WAL-MART mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <bhartiwalmartstore.com> domain name is confusingly similar to its WAL-MART mark. Respondent deletes the hyphen from and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that these changes fail to modify the <bhartiwalmartstore.com> domain name in any significant way. 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); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to the complainant’s mark, TIPP-EX and that use of a hyphen does not negate likelihood of confusion). Additionally, the Panel finds that Respondent’s addition of the terms “bharti” and “store” fail to differentiate the <bhartiwalmartstore.com> domain name from Complainant’s mark. SeeAm. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). Therefore, the Panel finds that the <bhartiwalmartstore.com> domain name is confusingly similar to Complainant’s WAL-MART mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) met.
Complainant argues that Respondent does not have rights and legitimate interests in the disputed domain name. In this instance, Complainant has adequately presented a prima facie case, but Respondent has failed to respond. As a result, the Panel may assume that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provides that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”); see also Vanguard Group Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel elects, however, to consider the evidence in light of the Policy ¶ 4(c) factors in order to make a complete determination of whether Respondent has any rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant asserts that it has not given Respondent permission to use either of its marks or any derivative of them for any purpose. Additionally, Complainant has provided the Panel with a copy of the WHOIS record for the <bhartiwalmartstore.com> domain name which lists “NA / Rajesh Kumar Kadian” as the domain name registrant. This listing similarly does not include any form of the WAL-MART mark or <bhartiwalmartstore.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next contends that Respondent’s lack of rights and legitimate interests in the disputed domain name is substantiated by its failure to use the <bhartiwalmartstore.com> domain name in a way which is afforded the protections of Policy ¶¶ 4(c)(i) and 4(c)(iii). Panels have previously held in George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), that the holding of an inactive website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <bhartiwalmartstore.com> domain name previously resolved to a website which did not offer links, products, or services to Internet users, but rather appeared to be a test retail sales website. The website expressly stated that there were no products for sale on the website and that the entire site was “under construction.” The <bhartiwalmartstore.com> domain name currently resolves to an inactive website. The Panel finds that the previous and current inactive uses of the <bhartiwalmartstore.com> domain name demonstrate that Respondent’s use of the disputed domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Policy finds Policy ¶ 4(a)(ii) met.
In order for a complainant to prevail, it must be shown that the disputed domain name was registered and is being used in bad faith. While Policy ¶ 4(b) provides a list of factors for the Panel to consider in making this determination, the list is not a complete one, and other considerations may be made. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel will review the totality of the circumstances in determining whether bad faith played a role in Respondent’s registration and use of the <bhartiwalmartstore.com> domain name.
Complainant argues that Respondent’s registration and use of the disputed domain name is clear from Respondent’s failure to make an active use of the disputed domain name. The <bhartiwalmartstore.com> domain name currently resolves to an entirely inactive website. The disputed domain name previously resolved to a website which Complainant characterizes as a test retail sales website but which offers no links to Internet users and states clearly that no products are for sale and that the site is under construction. The Panel finds that Respondent’s holding of an inactive website, whether entirely blank or offering no substantive content, demonstrates bad faith registration and use on the part of Respondent 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 Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bhartiwalmartstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 30, 2011
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