Wal-Mart Stores, Inc. v Dong Huang / freedom
Claim Number: FA1407001568962
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Dong Huang / freedom (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wal-mart.club>, registered with GoDaddy.com, Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2014; the National Arbitration Forum received payment on July 15, 2014.
On July 10, 2014, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <wal-mart.club> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 July 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2014 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@wal-mart.club. Also on July 16, 2014, 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 August 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown Q 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant uses the WAL-MART mark in connection with its expansive retail operations. The WAL-MART mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,322,750 registered Feb. 26, 1985). The <wal-mart.club> domain name is effectively identical to the WAL-MART mark.
Respondent has no rights or legitimate interests in this domain name. First, Respondent has never been commonly known by this domain name. Second, Respondent has shown a willingness to sell off the <wal-mart.club> domain name. Third, Respondent only uses the <wal-mart.club> domain name to promote parked-website advertisements.
Respondent has acted in bad faith. First, Respondent is seeking to sell off this domain name to Complainant. Second, Respondent has embarked on a pattern of bad faith registration. Also, his hosting of parking advertisements is evidence of bad faith. Finally, Respondent’s own e-mails to Complainant make it clear that Respondent registered the domain name knowing of the WAL-MART mark and intending to prey upon the association this domain name has with Complainant’s mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. Complainant is a prominent United States company and the largest retail operator in the world.
2. Complainant owns the famous WAL-MART mark which is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,322,750 registered Feb. 26, 1985). It uses the WAL-MART mark in connection with its very extensive retail operations.
3. Respondent registered the <wal-mart.club> domain name on June 6, 2014.The domain name is used to promote parked-website advertisements.
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 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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the WAL-MART mark in connection with its expansive retail operations. The WAL-MART mark is registered with the USPTO (e.g., Reg. No. 1,322,750 registered Feb. 26, 1985). This Panel finds USPTO registration to be sufficient evidence of Policy ¶ 4(a)(i) rights, whereever Respondent dwells. See, e.g., Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed <wal-mart.club> domain name is identical or confusingly similar to Complainant’s WAL-MART mark. Complainant submits the <wal-mart.club> domain name is effectively identical to the WAL-MART mark. The Panel agrees that there is Policy ¶ 4(a)(i) identicalness, as the introduction of the top-level domain “.club” does very little to differentiate the domain name from the WAL-MART mark. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). For these reasons, the Panel finds that the <wal-mart.club> domain name is identical to Complainant’s WAL-MART mark.
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that 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 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 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WAL-MART mark and to use it in its entirety in the domain name;
(b) Respondent registered the disputed domain name on June 6, 2014 and has used it to promote parked-website advertisements ;
(c) Respondent engaged in those activities without the permission or authority of Complainant;
(d) Complainant claims Respondent has never been commonly known by this domain name. The Panel notes the WHOIS information lists “Dong Huang” as the registrant of record for the domain name. The Panel finds there is no basis for concluding that Respondent has ever been commonly known as the <wal-mart.club> domain name as required by Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”);
(e) Complainant further alleges that Respondent has shown a willingness to sell the <wal-mart.club> domain name. The Panel notes that the e-mail evidence tendered records Respondent’s suggestion, when debating issues concerning the domain name that “…we could make a deal.” The Panel finds that, on the balance of probabilities, that Respondent meant by those words that he wanted to sell the domain name to Complainant at an attractive price. See Compl., at Attached Ex. G. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name);
(f) Complainant claims that Respondent only uses the <wal-mart.club> domain name to promote a parked website. The Panel notes that the domain name resolves to a website promoting GoDaddy.com’s services. See Compl., at Attached Ex. F. The Panel finds that such an action constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is seeking to sell the domain name to Complainant. The Panel finds that the unchallenged allegations to that effect in the complaint provide grounds for inferring an offer to sell the domain name that establishes Policy ¶ 4(b)(i) bad faith. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Secondly, Complainant argues that Respondent has embarked on a pattern of bad faith registration of domain names. It would be hard for Respondent to justify the registrations relied on in the Complaint. The Panel finds that evidence of such registrations shows that Respondent had a disposition to register domain names in bad faith.
Thirdly, Complainant argues that the hosting of parking advertisements is evidence of bad faith. The Panel notes that the domain name resolves to a website featuring an image of individuals donning GoDaddy.com apparel, along with promotional messages endorsing GoDaddy’s services. See Compl., at Attached Ex. F. The Panel finds this use of the domain name is not protectable under the Policy and further shows Respondent’s bad faith use of the domain name. See, e.g., Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Fourthly, Complainant submits that Respondent’s own e-mails to Complainant make it clear that Respondent registered the domain name knowing of the WAL-MART mark and intending to prey upon the association this domain name has with Complainant’s mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent clearly had actual knowledge of the WAL-MART mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in 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).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <wal-mart.club> domain name using the WAL-MART mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wal-mart.club> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 9, 2014
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