Wal-Mart Stores, Inc. v. Ryan Marion
Claim Number: FA0608000771825
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Uleses
C. Henderson, Jr., of Foley & Lardner LLP, 2029 Century
Park East, 35th Floor,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <walmartcomplaints.com>, registered with Go Daddy Software, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@walmartcomplaints.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <walmartcomplaints.com> domain name is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <walmartcomplaints.com> domain name.
3. Respondent registered and used the <walmartcomplaints.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores,
Inc., is the world’s largest retailer.
Complainant offers a wide variety of products including electronics, toys,
furniture, sporting goods, automotive goods and apparel in over fifteen
countries. Complainant has used its
WAL-MART mark countinuously and extensively since 1962 and holds a registration
with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg.
No. 1,783,039 issued July 20, 1993).
Respodent registered the <walmartcomplaints.com>
domain name on
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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s trademark registration
with the USPTO sufficiently establishes Complainant’s rights in the WAL-MART
mark. Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Respondent’s <walmartcomplaints.com>
domain name is confusingly similar to Complainant’s WAL-MART mark as it
contains Complainant’s mark in its entirety with the deletion of the hyphen in
the mark and the addition of the generic term “complaints.” Neither of these modifications to
Complainant’s mark is sufficient to negate the confusing similarity between
Complainant’s mark and Respondent’s disputed domain name. See Ritz-Carlton Hotel Co. v. Club Car
Executive Transp., D2000-0611 (WIPO
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant initially must establish that Respondent lacks
any rights or legitimate interests in the <walmartcomplaints.com>
domain name. However, once Complainant
demonstrates a prima facie case, the burden of proof shifts, and
Respondent must prove that it has rights or legitimate interests in the
disputed domain name. Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the respondent to provide
“concrete evidence that it has rights to or legitimate interests in the domain
name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum
Complainant asserts that Respondent is not authorized to use
Complainant’s WAL-MART mark, and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the <walmartcomplaints.com>
domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000), the panel found no rights or legitimate interest where the
respondent was not commonly known by the mark and had never applied for a
license or permission from the complainant to use the trademarked name. See RMO, Inc. v. Burbridge, FA 96949 (Nat.
Arb. Forum
Respondent is using the disputed domain name to display links to third-party websites, as well as Complainant’s website, presumably for its own commercial gain through the accrual of click-through fees. Such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark where the respondent presumably receives a referral fee for each misdirected Internet user was not a bona fide offering of goods or services as contemplated by the Policy); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <walmartcomplaints.com>
domain name to divert Internet users to a website that displays links to
websites, some of which are in direct competition with Complainant. The Panel finds that such use constitutes
disruption and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)); see
also EBAY, Inc. v. MEOdesigns,
D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the
domain name <eebay.com> in bad faith where the respondent has used the
domain name to promote competing auction sites).
The record indicates that Respondent is using the disputed domain name to display links to Complainant’s website as well as third-party websites, a use the Panel infers is for the commercial gain of Respondent through the earning of click-through fees. Additionally, the <walmartcomplaints.com> domain name is capable of creating a likelihood of confusion as to the source and affiliation of Complainant with the disputed domain name and corresponding website. In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the Panel found that where the respondent profited from its diversionary use of the complainant's mark where the domain name resolved to commercial websites and the respondent failed to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <walmartcomplaints.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 2, 2006
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