WIPO Arbitration and Mediation Center
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
A. Complainant
- 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.
B. Respondent
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.
7. Decision
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
Sole Panelist
Date: December 19, 2002