Wal-Mart Stores, Inc. v. Ascend Technology
Claim Number: FA0704000967887
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Ulyses
C. Henderson, Jr., of Foley & Lardner LLP, 2029 Century
Park East,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <walmartindia.com> and <walmartbangladesh.com>, registered with Wild West Domains, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2007 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@walmartindia.com and postmaster@walmartbangladesh.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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <walmartindia.com> and <walmartbangladesh.com> domain names are confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <walmartindia.com> and <walmartbangladesh.com> domain names.
3. Respondent registered and used the <walmartindia.com> and <walmartbangladesh.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores, Inc.,
was established in 1962 as a local specialty store and is now heralded as the
world’s largest retailer. Complainant
operates 1,100 stores and over 2,200 “Supercenters” throughout the
Respondent registered the <walmartindia.com> and <walmartbangladesh.com> domain names on September 1, 2003. Both of Respondent’s disputed domain names resolve to websites featuring commercial links such as travel-related websites, dating services, personal financial services and health care services.
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 asserts rights in the WAL-MART mark
through its registration of the mark with the USPTO. The Panel finds that Complainant has
established rights in the WAL-MARK mark for purposes of Policy ¶ 4(a)(i). See
Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum
Dec. 21, 2006) (finding that the Complainant’s federal trademark registration
establishes rights under Policy ¶ 4(a)(i)); see
also Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding
rights in the METLIFE mark as a result of its registration with the
Complainant contends that Respondent’s <walmartindia.com> and <walmartbangladesh.com>
domain names are confusingly similar to Complainant’s WAL-MART mark under
Policy ¶ 4(a)(i).
In Wal-Mart Stores, Inc. v. Walmarket
Canada, D2000-0150 (WIPO May 2, 2000), the panel found that the addition of
the geographic term “Canada” failed to distinguish the respondent’s domain name
from Complainant’s well-known WAL-MART mark.
Similarly in VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16,
2000), the panel refused to hold that the addition of
the geographic term “
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <walmartindia.com> and <walmartbangladesh.com> domain names. In circumstances such as this where Respondent has failed to respond, the Panel accepts Complainant’s assertions as true, amounting to a prima facie case under the Policy. Once a prima facie case is made, the burden of showing rights or legitimate interests shifts from Complainant to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant has submitted evidence that Respondent is using
both the <walmartindia.com> and <walmartbangladesh.com> domain names to operate websites featuring links to
various commercial websites unrelated to Complainant’s
retail business. The Panel infers from
Respondent’s use of the disputed domain names that it is collecting
click-through fees for each Internet user redirected to a website other than
Complainant’s. Numerous panels before
have held that the use of a domain name found to be confusingly similar to an
established mark for the purpose of collecting click-through fees is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp.
v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that the respondent’s use of the disputed domain name to redirect
Internet users to commercial websites, unrelated to the complainant and
presumably with the purpose of earning a commission or pay-per-click referral
fee did not evidence rights or legitimate interests in the domain name); see
also 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).”).
Complainant also states that it has in no way
licensed Respondent to register domain names featuring Complainant’s WAL-MART
mark. The WHOIS information for both the
<walmartindia.com> and <walmartbangladesh.com>
domain names list “Ascend Technology” as the registrant. With the record lacking any other evidence
that would suggest Respondent is commonly known by the disputed domain names,
the Panel finds that Respondent has not established rights or legitimate interests
in the <walmartindia.com> and <walmartbangladesh.com>
domain names for purposes of Policy ¶ 4(c)(ii).
See IndyMac Bank F.S.B. v. Eshback, FA 830934
(Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com> domain
name as the respondent was not authorized to register domain names featuring
the complainant’s mark and failed to submit evidence of that it is commonly
known by the disputed domain name); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <walmartindia.com> and <walmartbangladesh.com>
domain names to operate a website that features links to various commercial
websites, from which Respondent presumably collects click-through fees. The Panel finds that
Respondent’s use will likely cause confusion among Internet users as to
Complainant’s sponsorship of or affiliation with the resulting website. Profit from such confusion is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also 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).
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 <walmartindia.com> and <walmartbangladesh.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 4, 2007
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