DECISION

 

Walmart Apollo, LLC v. Domain Administrator / Fundacion Privacy Services LTD

Claim Number: FA2311002069423

PARTIES

Complainant is Walmart Apollo, LLC ("Complainant"), represented by Amy C. Leshan of Brooks Kushman P.C., Michigan, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <samsclubcareers.com>, registered with Media Elite Holdings Limited.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 2, 2023; Forum received payment on November 2, 2023.

 

On November 6, 2023, Media Elite Holdings Limited confirmed by e-mail to Forum that the <samsclubcareers.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 November 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2023 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@samsclubcareers.com. Also on November 7, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name at issue ("Disputed Domain Name") be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant submits that it is a multinational retail corporation operating a chain of hypermarkets, discount department stores, and grocery stores, which was founded in 1962 in Rogers Arkansas.

 

Among its businesses, since 1983 it has established, owned and operated SAM'S CLUB which is a chain of membership-only retail warehouse stores which has grown rapidly to serve families and entrepreneurs through nearly 600 clubs that employ about 100,000 associates in the U.S.A., and has more than 200 international clubs.

 

Complainant claims rights in the SAM'S CLUB mark established by its ownership of the portfolio of service mark registrations described below, and extensive use of the mark in commerce in the United States since at least as early as 1990, so that SAM'S CLUB has become an extremely well-known and highly recognized mark.

 

Complainant submits that its rights in the mark are established for over 30 years whereas the Disputed Domain Name was first registered on October 22, 2007, and registered by Respondent on or about September 4, 2018.

 

Complainant alleges that the Disputed Domain Name <samsclubcareers.com> is confusingly similar to the SAM'S CLUB mark in which Complainant has rights because it incorporates the mark in its entirety.

 

Furthermore, the addition of the descriptive word "careers" does not distinguish the Disputed Domain Name from Complainant's SAM'S CLUB, therefore constituting a confusingly similar use. See, e.g., The Toronto- Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶4(a)(i).")).

 

Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not, and has not been, commonly known by the Disputed Domain Name.

 

Upon information and belief, Respondent is known as "Domain Administrator, Fundacion Privacy Services LTD", as disclosed on the WHOIS data.

 

Complainant argues that a respondent is not commonly known by a domain name at issue when, as in this case, the relevant WHOIS merely lists a privacy service and the respondent fails to present any evidence proving otherwise. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan 1, 2015) ("The Panel notes that the WHOIS information merely lists a privacy service as a registrant. In light of Respondent's failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).").

 

Referring to screen captures of the websites to which the Disputed Domain Name has resolved in October and November 2023, which are exhibited annexes to the Complaint, Complainant submits that it illustrates that Respondent's sole apparent use of the Disputed Domain Name is to attract Internet users who are searching for information about careers at SAM'S CLUB. Complainant submits that Respondent only utilizes the Disputed Domain Name to attract clicks on the website in order to redirect the Internet user to other websites.

 

Complainant argues that such uses of the Disputed Domain Name in order to trick and divert Internet users' traffic to other, potentially harmful websites, do not give rise to rights or legitimate interests under the Policy.

Complainant adds that the exhibited screen captures show that it is likely that Respondent receives revenues for forwarding traffic to other sites.

 

One of the exhibited iterations shows that Respondent's website links to a third party website on which goods are offered for sale.

 

Another iteration of the website shows a parked page containing various third-party links, related to careers at SAM'S CLUB and generally about staffing, job searching recruitment and resume writing. with career-related links. Complainant submits that upon information and belief, Respondent receives click-through or affiliate fees in association with such links and argues that such use a confusingly similar domain name to attract Internet traffic for pay-per-click revenues is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, Forum Claim FA 1594837 (Forum Jan 22, 2015) ("The Panel finds Respondent's use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant's legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").

 

In another instance, the Disputed Domain Name redirects to a page where the user can click a button to "Continue to Store" to install a search extension. Redirect to "Get Better ChromeTMSearch".  Complainant states that its counsel did not click the links to install an extension, but submits that upon information and belief, malicious software would be installed at the link. Complainant argues that such use of the Disputed Domain Name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii). See Law School Admission Council, Inc. v. Private Registration / Domains By Proxy, LLC Forum Claim FA 2009061 (Forum Sept 22, 2022), ("Complainant's counsel did not click on the "continue" button out of concern that doing so would upload malicious malware onto her computer. Although there is no evidence demonstrating conclusively that malware would be installed, the facts presented raise substantial likelihood that it would be, and there is no evidence controverting Complainant's allegations. Using a confusingly similar domain name to distribute malware is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(iii).")

 

The exhibited screen captures show that in yet other instances, the Internet user is redirected to a blank page or a security warning.

In summary Complainant submits that Respondent uses the Disputed Domain Name to generate traffic from Internet users searching for Complainant. The Disputed Domain Name redirects users to potentially harmful websites, inactive websites and websites that trigger a security warning because they may be involved with phishing, theft of personal information or other malicious software. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of ... domain name resolves to a site containing pay-per-click hyperlinks and advertisements... Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith arguing that Respondent intentionally and willfully misrepresented to the Registrar that the registration of the Disputed Domain Name did not interfere with or infringe upon the rights of any third parties. Under Policy ¶ 2, a domain name registrant represents and warrants to the domain name registrar that to the registrant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party." See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc. Forum Claim FA 093636 (Forum Mar. 13, 2000) (under paragraph 2 of the Policy, a domain name registrant represents and warrants to the domain name registrar that to the registrant's knowledge, "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party").

 

Here, Respondent has registered the Disputed Domain Name that uses and fully incorporates Complainant's SAM'S CLUB trademarks, without Complainant's authorization. Thus, Respondent's registration of the Disputed Domain Name is a clear violation of the Policy.

 

Complainant adds that there is a legal presumption of bad faith because Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively. See Samsonite Corp. v. Colony Holding, Forum Claim FA 094313 (Forum Apr 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

Complainant argues that Respondent was reasonably aware of Complainant's rights in its SAM'S CLUB mark not only because of the fame of the mark, but also from Complainant's registrations for the SAM'S CLUB service mark. Thus, Respondent's use of Complainant's SAM'S CLUB mark in the Disputed Domain Name, in defiance of Complainant's rights, constitutes bad faith.

 

Complainant explains that Respondent had (at a minimum) constructive knowledge of the SAM'S CLUB Trademarks. Such knowledge may be inferred based on Complainant's registration of the SAM'S CLUB Trademarks with the United States Patent and Trademark Office and the well-known nature of the nearly 600 stores. See Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 ("Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's [rights]...").

 

Complainant argues that it strains credibility that the Respondent was oblivious of the existence of the Complainant's widely known and widely used SAM'S CLUB mark when registering the disputed Domain Name.

 

Complainant adds that Respondent relies upon Internet users searching for information and materials related to careers at Complainant's SAM'S CLUBS business to be mistakenly diverted to a variety of potentially harmful webpages, and argues that Respondent's actions create a likelihood of confusion as to the source, sponsorship affiliation, or endorsement of websites that appear at the Disputed Domain Name when Internet users are diverted to Respondent's websites and mistakenly believe that Respondent's websites are somehow affiliated with Complainant. Complainant submits that there is a long line of decisions made under the Policy in which it has been found that the addition of the term 'careers' to a complainant's mark are confusingly similar to the complainant's mark. Such cases include New York Life Insurance Company v. Manlidy / GNN, Forum Claim FA 2041169 (Forum May 24, 2023)(<nylifecareers.com>), Leidos, Inc. v. david mayor, Forum Claim FA 2042229 (Forum May 24, 2023)(<leidoscareers.com>), Spotify AB v. Olodo Glory / Sutherland, Forum Claim FA 1951577 (Forum July 15, 2021)(<spotifycareers.com>), and MFTB Holdco, Inc. dba Zillow v. Destiny Alms Forum Claim FA 2062105 (Forum Oct. 23, 2023) (<zillowcareers.com>).

 

It is contended that the facts demonstrate that Respondent registered the Disputed Domain Name to take advantage of the reputation and goodwill of Complainant and the SAM'S CLUB Trademarks, and Respondent has no legitimate interest in the Domain Name. At no time has Complainant authorized Respondent to use or register the Domain Name.

 

Finally, Complainant alleges that Respondent is using the Disputed Domain Name for commercial gain, in violation of Policy ¶ 4(b)(iv). As already noted, Respondent uses the Disputed Domain Name to host a website that redirects users to unrelated, potentially harmful websites; and Respondent presumably gains Internet traffic from its use of the SAM'S CLUB mark in the Disputed Domain Name and derives revenue by redirecting the traffic of Internet users that were originally searching for information related to career opportunities within Complainant's organization. See AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230 (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links). 

 

Complainant adds that use of a Disputed Domain Name to attract Internet traffic to one or more websites that download malware onto the computers of visitors to those sites is bad faith. See Law School Admission Council, Inc. v. Private Registration / Domains By Proxy, LLC FA 2009061 (Forum Sept 22, 2022).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant carries on business operating chains of hypermarkets, discount department stores, and grocery stores, including a chain of membership-only retail warehouse stores named SAM'S CLUB for which it holds a large portfolio of service mark registrations including the following which pre-date the registration of the Disputed Domain Name:

·       United States registered service mark SAM'S CLUB, registration number, 2,036,770, registered on the Principal Register on February 11, 1997 for goods in international class 42, claiming first use in commerce on August 8, 1990; and

·       United States registered service mark SAM'S CLUB (and Design), registration number 3,359,818 registered on the Principal Register on December 25, 2007 for goods in international class 35, claiming first use on commerce on September 14, 2006.

 

Complainant has an established Internet presence and since 1996 and has maintained a website promoting its business at <www.samsclub.com> since at least as early as 1996, which includes a page for applicants seeking employment at SAM'S CLUB chain at <www.careers.walmart.com/stores-clubs/sams-club-jobs>.

 

The Disputed Domain Name was registered on October 22, 2007, and in the months of October and November 2023, it has resolved to a number of web locations including well-known third party websites on which goods are offered for sale, a parked page containing various third-party links, related to careers at SAM'S CLUB and generally about staffing, job searching recruitment and resume writing with career-related links, a page where Internet visitors are invited to click a button to "Continue to Store" to install a search extension, redirecting to "Get Better ChromeTMSearch", also a blank page, and on another occasion a security warning.

 

There is no information available about the Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the Disputed Domain Name for the purposes of this proceeding

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the SAM'S CLUB mark, established by the ownership of the portfolio of service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in business operating chains of hypermarkets, discount department stores, and grocery stores, including a chain of membership-only retail warehouse stores named SAM'S CLUB.

 

Confusing Similarity

The disputed domain name <samsclubcareers.com> consists of Complainant's SAM'S CLUB mark in its entirety, albeit with the apostrophe omitted, in combination with the descriptive term "careers" and the gTLD extension <.com>.

 

Complainant's SAM'S CLUB mark is clearly recognizable as being the initial, dominant, and only distinctive element in the disputed domain name.

 

The addition of the descriptive element "careers" does not add any distinguishing element and does not distinguish the Disputed Domain Name from Complainant's mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity because in the context of the Disputed Domain Name, it would be considered to be a necessary technical requirement for a domain name registration,

 

This Panel finds therefore that the disputed domain name is confusingly similar to the SAM'S CLUB mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       Respondent is not, and has not, been commonly known by the Disputed Domain Name;

·       Upon information and belief, Respondent is known as "Domain Administrator, Fundacion Privacy Services LTD", as disclosed on the WHOIS data;

·       a respondent is not commonly known by a domain name at issue when, as in this case, the relevant WHOIS merely lists a privacy service and respondent fails to present any evidence proving otherwise;

·       screen captures of the website to which the Disputed Domain Name resolves which are exhibited in annexes to the Complaint, illustrates that Respondent only uses the Disputed Domain Name to attract clicks on the website in order to redirect the Internet user to other websites, to confuse internet users by disingenuously offering jobs related to Complainant's business; to trick and divert Internet users' traffic to other, potentially harmful websites,

·       such uses do not give rise to rights or legitimate interests under the Policy;

·       it is likely that Respondent receives revenues for forwarding traffic to third party websites;

·       one exhibited iteration illustrates that the Disputed Domain Name links to a third party website on which goods are offered for sale; another iteration of the website shows a parked page containing various third-party links related to careers at SAM'S CLUB and generally about staffing, job searching recruitment and resume writing from which upon information and belief, Respondent receives click-through or affiliate fees in association with such links;

·       Respondent is therefore using the confusingly similar Disputed Domain Name to attract Internet traffic for pay-per-click revenues is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii);

·       In another instance, the Disputed Domain Name redirects to a page where the user can click a button to "Continue to Store" to install a search extension. Complainant's counsel did not click the links to install an extension, upon information and belief, malicious software would be installed at the link;

·       while there is no evidence demonstrating conclusively that malware would be installed, the facts presented raise substantial likelihood that it would be, and there is no evidence controverting Complainant's allegations, and use of a confusingly similar domain name to distribute malware is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(iii).");

·       in yet other instances, the Internet user is redirected to a blank page or a security warning as shown in the exhibited screen captures;

·       In summary Complainant submits that Respondent uses the Disputed Domain Name to generate traffic from Internet users searching for Complainant. The Disputed Domain Name redirects users to potentially harmful websites, inactive websites and websites that trigger a security warning because they may be involved with phishing, theft of personal information or other malicious software.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the SAM'S CLUB mark which long predate the registration and first use of the Disputed Domain Name <samsclubcareers.com> which was registered in 2007.

 

SAM'S CLUB is a distinctive mark and this Panel accepts Complainant's submission that it strains credibility that the registrant was oblivious of the existence of the Complainant's widely known and widely used SAM'S CLUB mark when registering the Disputed Domain Name. It is most improbable that the Disputed Domain Name which is composed of Complainant's mark in combination with the term "careers" was chosen and registered for any reason other than its similarity to Complainant's mark, to create an opportunity to confuse Internet users.

 

The addition of the word "careers" is commonplace in domain names and website addresses to designate a webpage which the host provides information about and invites applications for job opportunities. The registrant of the Disputed Domain Name clearly intended that an Internet user encountering a website with the Disputed Domain Name as its address would infer that it is Complainant's HR and recruitment webpage.

 

This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the SAM'S CLUB mark.

 

Furthermore, Complainant's uncontested submission that in recent months, the Disputed Domain Name has resolved to a third-party website on which goods are offered for sale, a parked page containing various third-party links related to careers at SAM'S CLUB and generally about staffing, job searching recruitment and resume writing. with career-related links, a page where Internet visitor is invited to click a button to "Continue to Store" to install a search extension to "Get Better ChromeTMSearch", also a blank page, and on another occasion a security warning.

 

Such use of Complainant's mark within the disputed domain name constitutes bad faith for the purpose of the Policy.

 

This Panel finds therefore that by using the Disputed Domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on your web site or location.

 

While there is no evidence that website to which the Disputed Domain Name is being used to install malware on the devices of unsuspecting visitors, Complainant raises a valid concern in the circumstances outlined.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <samsclubcareers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

__________________________________________

 

James Bridgeman SC

Panelist

Dated: November 29, 2023