ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Thomson Hayner d/b/a Wireless Revolution d/b/a Latin Technologies
Case No. DAS2002-0001
1. The Parties
The Complainant is Wal-Mart Stores, Inc., C/O Blake Clardy, Senior Divisional Counsel, Bentonville, Arkansas, United States of America, represented by Janet F. Satterthwaite of Venable, Baetjer, Howard & Civiletti, LLP, Washington, D.C., United States of America.
The Respondent is Thomson Hayner d/b/a Wireless Revolution d/b/a Latin Technologies, Melrose, Massachusetts, United States of America.
2. The Domain Names and Registrars
The disputed domain names <walmart.as> and <walmart.ro> are registered with Register.com, New York, New York, United States of America. The disputed domain names <walmart.ph> and <walmart.com.ph> are registered with DotPH, Pasig City, the Philippines.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2002, by email and on November 4, 2002, in hard copy. On October 31, 2002, the Center transmitted by email to Register.com and DotPH a request for registrar verification in connection with the domain names at issue. On November 1, 2002, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On November 7, 2002, DotPH transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The two domain names <walmart.as> and <walmart.ro> are regulated by the Uniform Domain Name Dispute Resolution Policy whereas <walmart.ph> and <walmart.com.ph> are regulated by the dotPH UDRP Policy. There are some very small differences between the two said policies, however none of which affect this case. Therefore, in this case, the Panel will refer to the two policies simply as the "Policy". The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on November 8, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was November 28, 2002. The Respondent did not submit a response, however, and the Center notified the Respondent of its default on December 2, 2002.
The Center appointed the Panel on December 5, 2002. The Panel finds that it was properly constituted. The Panel submitted its Statement of Acceptance and Declaration of Impartiality and Independence on December 5, 2002, as required by the Center in compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is a mass retailer that owns thousands of stores in the United States as well as in other countries of the world. The Complainant's registered service mark, "Wal-Mart", is well-known in the United States and throughout large areas of the world.
Respondent is listed as the Registrant of the disputed domain names: <walmart.ro> was registered on September 29, 1999, but the dates of registration of the remaining three domain names (<walmart.as>, <walmart.ph> and <walmart.com.ph>) can not be determined from the registrar verifications.
5. Parties’ Contentions
- The Complainant is the world's largest retailer. There are at least 1,647 Wal-Mart stores and 1,066 Wal-Mart Supercenter stores in the United States, and over 2,700 such stores worldwide. There are five Wal-Mart stores or Wal-Mart Supercenters within fifteen miles of the address of the Respondent. The Complainant engages in extensive advertising of its services and merchandise in a number of countries, and uses the "Wal-Mart" mark in this regard.
- The Complainant owns service mark registrations for the mark, "Wal-Mart", in forty-six countries including the United States, and the mark has been used continuously by the Complainant since 1962. The Complainant also owns registrations for, among others, the domain names <walmart.com>, <wal-mart.com> and <walmartstores.com>.
- The disputed domain names are all virtually identical to the Complainant's service mark. The fame of the mark only enhances the likelihood of confusion with the domain names at issue.
- The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent's name is not the same or similar to the disputed domain names. The Respondent is making neither fair non-commercial use of the disputed domain names nor a bona fide commercial use of them.
- The Respondent registered and is using the disputed domain names in bad faith. Respondent has not maintained up-to-date or correct contact information. There are no web sites connected to any of the disputed domain names. Furthermore, the Respondent has engaged in a pattern of registering domain names in various country-code top levels, including several which contain the name "walmart", and which have lapsed.
- The Respondent is using the disputed domain names with the intent, for commercial gain, to misleadingly divert the Complainant’s consumers to its web site or to disrupt the Complainant’s business.
The Respondent did not file a response and is in default in this proceeding.
C. Due Process
The Center forwarded a copy of this Complaint to the Respondent by hard copy and e-mail and sent the Respondent a Notification of Respondent Default by e-mail. In light of these facts, the Panel is convinced that the Respondent has been duly notified of this proceeding and that the Respondent has suffered no denial of due process.
6. Discussion and Findings
In accordance with Paragraph 15(a) of the Rules, the Panel is instructed 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."
Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail in these proceedings and be awarded the disputed domain names if the Complainant can prove the following:
- the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names were registered and are being used in bad faith
A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence to establish that the Complainant owns a registration of the service mark "Wal-Mart" in the United States (i.e., U.S. Registration No.1,783,039, dated July 20, 1993, for use in retail department store services) and in the Philippines (Registration No. 66502, dated November 19, 1998) (Annex E to the Complaint). The Complainant has operated stores using its mark since the 1960’s. Clearly the Complainant's rights in that service mark pre-date the Respondent's registration of the disputed domain names.
The disputed domain names, <walmart.as>, <walmart.ro>, <walmart.ph> and <walmart.com.ph>, vary from the Complainant's service mark, "Wal-Mart", only as to the deletion of the hyphen in the main word and the addition of the various gTLDs at the end. It has been well established in prior Policy panel decisions that such de minimis variations between service marks and domain names fail to prevent a finding of identity or confusing similarity.
In accordance with the foregoing, the Panel determines that the disputed domain names are identical or confusingly similar to a service mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Complainant bears the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain names. However, since the Complainant has proven its rights in a confusingly similar service mark and there is nothing in the record to show that the Complainant has licensed, authorized or permitted the Respondent to use that service mark, the burden shifts to the Respondent to produce evidence that he possesses such rights or interests.
Paragraph 4(c) of the Policy states three ways in which the Respondent might meet this burden, but there is no indication in the record that he has succeeded along any of those lines. Clearly, neither the Respondent's name nor the names of his companies appearing on the domain name registrations show any connection to the word "walmart" (Paragraph 4(c)(ii)). Moreover, there is nothing in the record to support a finding that the Respondent has used or prepared to use the disputed domain names in a bona fide offering of services or goods (Paragraph 4(c)(i),) or is engaged in a legitimate noncommercial or fair use of those names (Paragraph 4(c)(iii)). While the listings in Paragraph 4(c) of the Policy are not intended to be exhaustive of the ways of demonstrating rights and legitimate interests in domain names, the lack of a Response in this case fatally hampers the Panel in finding any other avenue by which the Respondent might prevail on this issue.
Thus, the Panel concludes that the Complainant has carried its burden in establishing that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant asserts that the Respondent registered and is using the disputed domain names in bad faith. In furtherance of its assertion, the Complainant has submitted to the Panel only unsubstantiated statements, but not tangible evidence, to support a finding that Respondent's actions fall under any of the four specific circumstances indicative of bad faith that are listed in Paragraph 4(b) of the Policy. Thus, the Panel cannot rule on this issue based on conformance with those circumstances.
However, those circumstances are not meant to be exhaustive of the possible reasons on which to base a finding under the Policy of bad faith registration and use of a domain name. The Complainant contends also that the Respondent's bad faith arises from its almost certain knowledge of the fame of Complainant’s service mark. Previous panels have reached a conclusion of bad faith registration and use based almost solely on the level of notoriety of the trademark in question (for example the mark, "Chanel", in Chanel, Inc. v. Buybeauty.com, WIPO Case No. D2000-1126 (November 22, 2000), and "Yahoo!" in Yahoo! Inc. v. M & A Enterprises, WIPO Case No. D2000-0748 (October 23, 2000)).
In this Case, the Panel concludes that the Complainant, if not the largest retailer in the world, is certainly one of the largest retailers in the United States of America, the country where the Respondent is domiciled. The Complainant's stores are virtually everywhere in the United States, and the Complainant's advertising and its service mark are equally ubiquitous. As a result, the Panel finds it difficult to believe that Respondent was unaware of the notoriety of Complainant’s mark and that use of domain names so close in spelling to that mark would violate the Complainant’s rights. Moreover, the lack of evidence that the Respondent is actually using any of the names at all points to bad faith use, since passive holding of a domain name that is identical or confusingly similar to a famous mark has been found to constitute bad faith in itself. See Wal-Mart Stores, Inc. vs. Su Rong Ye, WIPO Case No. D2002-0771 (October 17, 2002), and Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, (February 18, 2000).
Thus, the Panel concludes that the Respondent acted in bad faith in registering and using the disputed domain names.
The Panel finds the disputed domain names, <walmart.as>, <walmart.ro>, <walmart.ph> and <walmart.com.ph>, are confusingly similar to the Complainant’s "Wal-Mart" service mark. The Panel also finds that the Respondent has no rights or legitimate interests in the disputed domain names. Finally, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith because he was undoubtedly aware that the Complainant's mark was a famous one.
Therefore, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the disputed domain names, <walmart.as>, <walmart.ro>, <walmart.ph> and <walmart.com.ph> be transferred from the Respondent, Thomas Hayner d/b/a Wireless Revolution and d/b/a Latin Technologies, to the Complainant, Wal-Mart Stores, Inc.
Dennis A. Foster
Date: December 19, 2002