Wal-Mart Stores, Inc. v. Dan O'Loughlin
Claim Number: FA0704000968378
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by Uleses
C. Henderson of Foley & Lardner LLP, 2029 Century
Park East, Suite 3500, Los Angeles, CA 90026. Respondent is Dan O'Loughlin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <walmart-cameras.com>, registered with Threadtrade.com.
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 April 23, 2007; the National Arbitration Forum received a hard copy of the Complaint April 23, 2007.
On May 11, 2007, Threadtrade.com confirmed by e-mail to the National Arbitration Forum that the <walmart-cameras.com> domain name is registered with Threadtrade.com and that Respondent is the current registrant of the name. Threadtrade.com verified that Respondent is bound by the Threadtrade.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 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@walmart-cameras.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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. The domain name that Respondent registered, <walmart-cameras.com>, is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent has no rights to or legitimate interests in the <walmart-cameras.com> domain name.
3. Respondent registered and used the <walmart-cameras.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Wal-Mart Stores,
Inc., has
provided retail and department store services and products in the
The WAL-MART mark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,783,039 issued July 20, 1993.)
Respondent’s <walmart-cameras.com> domain name was registered January 15, 2007, and resolves to a website offering a search engine and hyperlinks to various third-party websites, including some in direct competition with Complainant.
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 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.”).
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.
Complainant established with extrinsic evidence in this proceeding that it has rights in the WAL-MART mark by registration with the USPTO. This satisfies the requirements of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).
The <walmart-cameras.com> domain name is confusingly similar to Complainant’s WAL-MART mark under Policy ¶ 4(a)(i) as it incorporates Complainant’s mark, relocates the hyphen, and adds the generic term “cameras” as well as appending the mark with the generic top-level domain (“gTLD”) “.com.” See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name. Complainant alleges that Respondent has no such rights. Under Policy ¶ 4(a)(ii), Complainant has the burden to establish a prima facie case that Respondent holds no rights or legitimate interests in the disputed domain name. Complainant’s allegation that Respondent lacks such rights to or legitimate interests in the <walmart-cameras.com> domain name meets this requirement, thus shifting the burden to Respondent to establish that legitimate rights or interests exist. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
When a Respondent fails to submit a Response, the Panel
presumes that Respondent has failed to establish rights or legitimate interests
in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it
is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where “Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names” and “no commercial use is being made
of the names”).
However, the Panel examines the
evidence to see if the proof suggests that Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Nothing in the evidence, including the WHOIS information, suggests that
Respondent is commonly known by the <walmart-cameras.com>
domain name. According to Complainant, Respondent has no
affiliation or relationship with Complainant and Complainant has not authorized
Respondent to use the WAL-MART mark.
Therefore, the Panel finds that Respondent is not commonly known by the <walmart-cameras.com> domain name
pursuant to 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.”); see
also
As demonstrated by the evidence, the disputed domain name resolves to a website offering a search engine and hyperlinks to various third-party websites, including some in direct competition with Complainant. The Panel finds that such activity is not a bona fide offering of goods or service under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); 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 Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using the disputed domain name, which resolves to a website displaying a search engine as well as various hyperlinks to third-party websites, some of which are in direct competition with Complainant’s business associated with the WAL-MART mark. The evidence supports findings that Respondent registered and used the <walmart-cameras.com> domain name to disrupt Complainant’s competitive business and this constitutes bad faith under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO 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).
Under Policy ¶ 4(b)(iv), Respondent’s registration and use of the disputed domain name to attract Internet users seeking Complainant’s products and services to its own website for commercial gain is further evidence of bad faith. Additionally, according to the evidence, the disputed domain name is capable of creating confusion as to Complainant’s association with the disputed domain name. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel finds that Complainant satisfied 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 <walmart-cameras.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 17, 2007.
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