Wal-Mart Stores, Inc. v. wang yulong; yuhua wang / Okay Inc
Claim Number: FA1306001506977
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Gary J. Rinkerman of Drinker Biddle & Reath LLP, Washington, D.C., USA. Respondent is wang yulong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com>, registered with Wild West Domains, LLC.
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 June 26, 2013; the National Arbitration Forum received payment August 27, 2013.
On August 28, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com> domain names is/are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. Wild West Domains, LLC verified that Respondent is bound by the Wild West Domains, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2013, 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@diablo3walmart.com, postmaster@gw2walmart.com, postmaster@rswalmart.com, postmaster@rswalmart.net, and postmaster@troywalmart.com. Also on August 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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" 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
In the instant proceeding, Complainant alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity operating under several aliases. 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.” The Panel finds here that that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and thus this Panel chooses to proceed with the instant proceedings.
Complainant has continuously used the WALMART mark since as early as 1962 in connection with retail store services, including online retail store services offered via the Internet. Complainant has made long-standing use of various registered domain names incorporating the WALMART mark, including <walmart.com>, <walmartstore.com>, <wal-mart.com>, and other similar domain names. Complainant’s use, sales, and promotion of the WALMART mark and domain name have resulted in substantial fame and distinctive indicators of source in Complainant’s goods and retail store services. Complainant’s business is one of the world’s largest companies, as well as one of the world’s largest retailers. Complainant owns trademark registrations for its WALMART marks with the United States Patent and Trademark Office (“USPTO”), including the WALMART & Design mark (e.g., Reg. No. 1,322,750 registered February 26, 1985), which protects use of the mark in connection with retail department store services.
Respondent acquired the disputed domain names on or around April 2, 2011, which post-dates Complainant’s adoption of its WALMART mark by nearly fifty years. Respondent uses the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names to resolve to websites that purport to sell virtual items or virtual currency used in MMORPGs. (The Panel notes that MMORPG, although not defined by Complainant, is an acronym meaning “massive multiplayer online role-playing game,” which is an online game involving a large number of online participants). The <rswalmart.net> and <troywalmart.com> domain names resolve to websites that are not active. Complainant urges that Respondent has no connection or affiliation with Complainant, is not licensed by Complainant and has no consent from Complainant to use of the WALMART mark in a domain name or in any other manner. Each of the disputed domain names, <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com>, is confusingly similar to Complainant’s WALMART mark by the addition of a descriptive term and a generic top-level domain (“gTLD”). Respondent is identified by names entirely unrelated to the disputed domain names, as supported by the WHOIS information, which permits a finding that Respondent is not commonly known by the domain names or Complainant’s protected mark. Respondent does not make a bona fide offering of goods or services at the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names, as it infringes on Complainant’s registered trademark in order to sell products for Respondent’s improper commercial gain. Respondent makes no offering of goods or services at all at the <rswalmart.net>, and <troywalmart.com> domain names. Respondent also does not make a legitimate noncommercial or fair use of any of the disputed domain names. Respondent’s registration and use of each of the disputed domain names is in bad faith, as demonstrated by Respondent’s actual and constructive knowledge of Complainant’s mark. Respondent’s non-use of the <rswalmart.net>, and <troywalmart.com> domain names further demonstrates bad faith.
FINDINGS:
Complainant established rights to and legitimate interests in the marks contained within the disputed domain names.
Respondent has no such rights to or legitimate interests in the domain names containing Complainant’s protected mark.
The disputed domain names are confusingly similar to Complainant’s protected mark.
Respondent registered and used or passively held the disputed domain names in bad faith.
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."
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.
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.”).
Identical to or Confusingly Similar:
Complainant claims that it is the owner of the WALMART mark, as a result of its trademark registrations with the USPTO (e.g., Reg. No. 1,322,750 registered February 26, 1985). A USPTO registration is evidence that a complainant has legitimate rights in a claimed mark, under a Policy ¶ 4(a)(i) analysis. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). A respondent’s country of residence does not impact a complainant’s rights in a mark if the complainant can demonstrate rights in some jurisdiction. See 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). The Panel agrees that Complainant’s USPTO registration establishes its rights in the WALMART mark pursuant to Policy ¶ 4(a)(i), Respondent’s residence in China notwithstanding.
Complainant alleges that each of the <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com> domain names is confusingly similar to Complainant’s WALMART marks due to the inclusion of the WALMART mark in each of the domains. Complainant alleges that the domain names include either a meaningless combination of letters and numbers (such as “gw2” or “rs”), or a term loosely referencing the name of an MMORPG (such as “troy” or “diablo3”). The Panel notes as well that the disputed domain names each includes a generic top-level domain (“gTLD”), either “.com” or “.net.” The Panel finds that adding letters or terms to a mark, as well as a gTLD, does not distinguish the disputed domain names from Complainant’s protected mark. These disputed domain names confusingly similar to Complainant’s WALMART mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent is not commonly known by any of the <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com> domain names, as Respondent is identified either as “wang yulong” or as “yuhua wang” in the WHOIS information for the disputed domain names. Complainant further alleges that it has the exclusive right to use the WALMART mark and that it has not extended any right to Respondent to use its protected mark. The Panel finds that neither “wang yulong” or “yuhua wang” correspond with any of the domain names in dispute, and thus the Panel finds that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant next contends that Respondent does not make a bona fide offering of goods or services of the disputed domain names. Complainant alleges that Respondent uses the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names to sell products for Respondent’s commercial gain. The Panel notes that the screen shots contained in Complainant’s Exhibit F show pages offering virtual currency or virtual items for sale for use in MMORPGs, specifically for the games Diablo III, Guild Wars 2, and Runescape. Complainant argues that Respondent’s commercial use does not demonstrate that Respondent uses the domain names for a legitimate noncommercial purpose. The Panel notes that Complainant does not specifically allege whether or not Respondent’s use is competing. A respondent’s use of a domain name to generally divert Internet users in order to make a profit is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent uses the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names to make a commercial gain by making online sales, and such use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain names.
Complainant contends that Respondent also does not make any use of the <rswalmart.net>, and <troywalmart.com> domain names, claiming the resolving webpages are inactive. The Panel notes that Complainant’s Exhibit F shows that the <rswalmart.net> domain name resolves to a website showing nothing more than two lines of Chinese characters, and the <troywalmart.com> domain name resolves to a website stating “500 Internal Server Error.” The Panel finds that failing to make any use, or passive holding, of disputed domain names is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant lastly urges that, as per Policy ¶ 4(a)(ii), Respondent uses the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names to make a commercial gain by selling virtual currency and other items to website visitors. The Panel notes that Complainant does not specify whether Respondent’s use competes or not, but the Panel finds that Respondent uses the <diablo3walmart.com>, <gw2walmart.com>, and <rswalmart.com> domain names in bad faith under Policy ¶ 4(b)(iv) because Respondent uses confusingly similar domain names to establish a website meant to attract Internet users and advertise virtual merchandise for sale. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
A finding of bad faith is not necessarily predicated on a respondent’s use of a disputed domain name in a manner listed under Policy ¶ 4(b), and the Panel may look to the totality of the circumstances, such as other uses and factors, in making a determination of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence). The Panel finds that Respondent’ registered and used the <rswalmart.net>, and <troywalmart.com> domain names in bad faith under a Policy ¶ 4(b) analysis.
Complainant also argues that Respondent shows bad faith registration and use by its failure to post any content at the <rswalmart.net>, and <troywalmart.com> domain names. The Panel again notes that Complainant’s Exhibit F shows that the two resolving websites are essentially empty with the exception of two lines of text noting error message. The Panel agrees that failing to make an active use, or passively holding, the disputed domain names also supports a finding of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Complainant argues as well that Respondent registered the <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com> domain names with actual and constructive knowledge of Complainant’s rights in the WALMART mark, thereby demonstrating bad faith. The Panel notes that bad faith is not generally found based on constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel finds here that because Complainant’s famous and distinctive mark is contained within each of the disputed domain names, Respondent had actual notice of Complainant’s rights in the mark when Respondent registered the domains and this actual knowledge does support findings of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <diablo3walmart.com>, <gw2walmart.com>, <rswalmart.com>, <rswalmart.net>, and <troywalmart.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 8, 2013
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