Wal-Mart Stores, Inc. v. Thesourcezine and V Power
Claim Number: FA0511000600806
Complainant is Wal-Mart Stores, Inc. (“Complainant”), represented by David Schramm, of Kirkpatrick & Lockhart Nicholson Graham LLP, Henry W. Oliver Building, 535 Smithfield Street, Pittsburgh, PA 15222. Respondent is Thesourcezine c/o V Power (“Respondent”), P.O. Box 2012, Redmond, WA 98073.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <walmartsuperstore.com>, registered with Enom, Inc.
The undersigned certifies that he as acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 23, 2005.
On November 22, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <walmartsuperstore.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 2005 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@walmartsuperstore.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 21, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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." 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 <walmartsuperstore.com> domain name is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <walmartsuperstore.com> domain name.
3. Respondent registered and used the <walmartsuperstore.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’s first “Supercenter,” featuring a full line of food items in addition to its dry goods, opened in 1988. Complainant operates 1,233 WAL-MART stores and 1,914 WAL-MART “supercenters” throughout the United States and 1,669 WAL-MART stores and “supercenters” internationally.
Complainant holds the registration for the WAL-MART mark, registered July 20, 1993 (Reg. No. 1,783,039) with the U.S. Patent and Trademark Office. The first use of this mark dates back to July 1, 1962.
Respondent, Thesourcezine, registered the <walmartsuperstore.com> domain name on January 5, 2003. Respondent used to be a member of Complainant’s affiliate program, receiving revenues for referring Internet traffic to Complainant. In compliance with Complainant’s affiliate program agreement, Respondent appropriated a domain name unrelated to Complainant, <coffeecuptimes.com>, for referrals to Complainant. However, some time after agreeing to Complainant’s affiliate terms, Respondent began using the <walmartsuperstore.com> domain name in conjunction with Complainant’s affiliate program. Complainant asserts that the affiliate agreement specifically prohibits participants from appropriating the WAL-MART mark.
Complainant sent two cease and desist letters on August 30, 2005 and September 14, 2005. Respondent responded by changing the content at the <walmartsuperstore.com> domain name. Presently, the website associated with the <walmartsuperstore.com> domain name displays a Google search engine bar as well as advertisements and links that incorporate Complainant’s WAL-MART mark and link to Complainant’s competitors.
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 has offered proof of its registration of the
WAL-MART mark. The Panel accepts
Complainant’s trademark registration as proof of Complainant’s rights pursuant
to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); 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.”).
The Panel finds that the <walmartsuperstore.com>
domain name is confusingly similar to Complainant’s WAL-MART mark. The only difference is the addition of the
word “superstore,” which does not significantly distinguish the domain name
from the mark. See L.L. Bean, Inc.
v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy); Christie’s Inc. v.
Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding
that the domain name
<christiesauction.com> is confusingly similar to the complainant's
mark since it merely adds the word “auction” used in its generic sense).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Respondent is appropriating Complainant’s mark to lead Internet users to Complainant’s competitors. The Panel finds that appropriating the WAL-MART mark to lead Internet users to its competitors is neither a bona fide offering of a good or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that there is nothing in the record,
including the WHOIS registration information, which demonstrates that
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to refer
Internet users to Complainant’s competitors.
The Panel finds that this is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See 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); 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)).
Respondent also used the disputed domain name to participate
in Complainant’s affiliate program, in violation of its agreement with
Complainant. Because the affiliate
program created commercial benefit for Respondent, the Panel finds that
Respondent has appropriated a confusingly similar domain name for commercial
gain, which is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); 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 has established 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 <walmartsuperstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 5, 2006
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