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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Jeff Milchen

Case No. D2005-0130

1. The Parties

Complainant is Wal-Mart Stores, Inc. (“Complainant” or “Wal-Mart”), a United States corporation located in Bentonville, Arkansas, United States of America.

Respondent is Jeff Milchen (“Respondent” or “Milchen”) located in Bozeman, Montana, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <walmartfacts.biz> (the “Domain Name”). The registrar is GoDaddy.com aka GoDaddy Software, Inc. (the “Registrar”) located at in Scottsdale, Arizona, United States of America.

3. Procedural History

On February 4, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint via email. On February 8, 2005, the Center sent an Acknowledgment of Receipt of Complaint to the parties. On February 8, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name. On February 10, 2005, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On February 16, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On March 9, 2005, the Center received the Response of Respondent via email. On March 23, 2005, the Center received the Response of Respondent in hardcopy. The Center received Supplemental Filings from each of the parties. In addition, each of the parties submitted email comments after the Supplemental Filings.

On April 1, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page , the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist. The Panel advised the Center that the Supplemental Filings will be considered. The emails exchanged by the parties after the Supplemental Filings have not been considered.

4. Factual Background

Complainant has registered its service mark WAL-MART (the “Mark”) with the United States Patent and Trademark Office on July 20, 1993, with Registration No. 1,783,039. Additionally Wal-Mart asserts that it has a trade name in WAL-MART. Wal-Mart has continuously used the Mark since 1967 and has registrations in 46 countries.

Complainant is the world’s largest retailer. In addition to operating retail stores, Wal-Mart has diversified into film development, pharmacy, grocery, finance and other related consumer services. In the United States alone, Wal-Mart operates 1,478 stores and 1,471 Supercenters. Wal-Mart employs 1.5 million people worldwide and services 138 million customers. Worldwide annual sales for fiscal year 2003 were 250 billion dollars, of which 47 billion dollars was outside of the United States.

Complainant owns numerous domain names including <walmart.com>, <wal-mart.com>, <walmartstores.com> and <walmartfacts.com>. Complainant registered the domain name <walmartfacts.com> on July 2, 2004.

Respondent registered the Domain Name <walmartfacts.biz> on January 14, 2005.

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainant contends that it has registrations of the service mark WAL-MART, that its registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the WAL-MART Mark. Complainant further alleges that its use of WAL-MART as a trade name gives it rights in the phrase “Wal-Mart”.

(ii) Complainant argues that the Domain Name is identical with and confusingly similar to the WAL-MART Mark, pursuant to paragraph 4(a)(i) of the Policy. Complainant alleges that the entirety of the Mark is used in the Domain Name with the addition of generic terms.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that it had a significant presence on the Internet using <walmartfacts.com> and has a Supercenter in Bozeman, Montana which Respondent lists as his address. Complainant asserts that Respondent could have no bona fide intention in registering the Domain Name and hence could not have offered any bona fide services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the WAL-MART Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainant alleges that Respondent has deliberately registered the Domain Name containing the WAL-MART Mark, with actual and constructive notice of Complainant’s rights. Complainant alleges that Respondent is using the Domain Name to misleadingly divert consumers and tarnish the WAL-MART Mark.

(iv) Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).

Complainant argues that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant or one of its competitors for valuable consideration in excess of the registrant’s out-of-pocket costs.

Complainant further asserts that the totality of the circumstances demonstrate that Respondent is acting in bad faith.

B. Respondent’s contentions

(i) Respondent does not dispute that the Complainant has a valid registration of the service mark WAL-MART and rights in the trade name “Wal-Mart”.

(ii) Respondent does not dispute that Domain Name is identical with or confusingly similar to the Mark, except to say that a disclaimer on his website will resolve any confusion as to source.

(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Name because it is conducting a legitimate noncommercial activity which constitutes fair use. Respondent admits to being a long-standing critic of Wal-Mart and argues that his activities are protected as criticism and parody of the Complainant.

Respondent notes that it does not derive any financial benefit from activity at the website to which the Domain Name is directed. In addition, Respondent states that his intention is to put original content critical of Wal-Mart on the website in the future.

(iv) Respondent denies that it registered or used the Domain Name in bad faith. Respondent alleges that paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies. Respondent asserts that the totality of the circumstances surrounding his use of the Domain Name constitutes protected free speech and does not constitute bad faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

Enforceable Trademark Rights

Complainant contends that it has a valid and subsisting service mark registration of WAL-MART and that this registration serves as prima facie evidence of its ownership and the validity of the WAL-MART Mark.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not contested the assertions by Complainant that it has a valid registration of the Mark WAL-MART, thus failing to refute the presumption.

Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the Mark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the Domain Name is confusingly similar to the Mark, except to say that a disclaimer on his website will resolve any confusion as to source.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.

The Panel notes that the entirety of the WAL-MART Mark is included in the Domain Name.

Generally, a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4^th ed. 1998). Here, Respondent’s <walmartfacts.biz> Domain Name is confusingly similar to the WAL-MART Mark because it incorporates “walmart” in its entirety with the addition of a hyphen, the phrase “facts” and the gTLD extension “.biz” all of which are non-distinctive.

The use of the disclaimer as to source is addressed below in the analysis of whether Respondent has acted in bad faith.

Therefore, the Panel finds that the Domain Name is confusingly similar to the WAL-MART Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the WAL-MART Mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant has alleged that none of these three factors applies and has come forward with a sufficient showing to shift the burden to the Respondent. The only factor in this paragraph 4(c) which is contested by Respondent is paragraph 4(c)(iii). Respondent asserts that it is making a legitimate noncommercial or fair use of the WAL-MART Mark and trade name. The Panel finds that the admission of Respondent that he has long been critical of Wal-Mart is not sufficient to prove that the Respondent is making fair use pursuant to paragraph 4(c)(iii) of the Policy.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant alleges that Respondent has knowingly incorporated the protected Mark WAL-MART into its Domain Name. Complainant alleges that Respondent has knowingly registered the Domain Name <walmartfacts.biz> which is identical (except for the gTLD extension) to the Complainant’s <walmartfacts.com> domain name. The Respondent is attempting to attract Internet users, including Wal-Mart customers, to Respondent’s website by using a confusingly similar website in which it has no legitimate rights. Complainant alleges that Respondent has copied material from Complainant’s website in violation of copyright protection. Complainant alleges that Respondent’s intent is to damage Wal-Mart and to tarnish the Mark.

The Panel finds that Complainant has not adduced sufficient facts to show the existence of one of the bad faith elements under paragraph 4(b). Respondent does not appear to have the intent for commercial gain. However, Respondent has not presented sufficient information that the intention behind establishing the Domain Name was “nominative fair use”. The prospect of posting critical commentary at some future time is not appropriate for consideration by the Panel. Therefore the Panelist is not convinced given the evidence in this proceeding that the Domain Name and website to which it is directed were intended for free speech or fair comment when registered, constructed and initially used.

The elements of paragraph 4(b) are not exclusive and the Panel may look to the totality of the circumstances surrounding the registration and use of the Domain Name to determine whether bad faith exists. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

One such factor is that Respondent has made no use of the Domain Name. Complainant alleges that Respondent has not developed any original website at “www.walmartfacts.biz” or any other use of the Domain Name, prior to the filing of the complaint in this proceeding. See Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). The original content of the website appears to be a mere copying of material from Complainant’s website.

A second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s Mark when Respondent registered the Domain Name. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (April 18, 2000); Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (WIPO June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith). Complainant has alleged, without refutation, that Respondent had actual and constructive knowledge of the Mark. The record indicates that Complainant had registered the Mark, registered the <walmartfacts.com> domain name and operated a Supercenter in Bozeman, Montana prior to Respondent registering the Domain Name. The Panel concludes that Respondent had actual and constructive knowledge of the Mark and the rights of Complainant when Respondent registered the Domain Name.

A third factor is a course of conduct undertaken by the Respondent showing actual malice or ill will toward Complainant. Respondent directly downloaded material from Wal-Mart’s webpage onto the website to which <walmartfacts.biz> was directed. Complainant alleges that this is a copyrighted webpage image and that Respondent has committed copyright infringement by its actions. Respondent argues that he has a long history of being critical of Wal-Mart and that the use of the copyrighted material was a parody and hence protected as fair use. A parody is a work which exaggerates or emphasizes certain recognizable features or characteristics of the object of the parody to create comedy or ridicule. The copying of a protected work is not parody. The admitted animus which Respondent holds toward Wal-Mart and his use of copyrighted material is an indication of actual malice and ill will toward Complainant.

A fourth factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with complainant, and inferred bad faith use of <cellularonechina.com>, because the domain name included complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name”. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Having found that the Domain Name is not protected by fair use, the Panel can conceive of no legitimate use of the Domain Name.

The evidence establishes: (i) no use by Respondent of the Domain Name to post any content constituting fair use or any other legitimate purpose; (ii) actual and constructive knowledge by Respondent of Complainant’s rights in the WAL-MART Mark upon the registration of the Domain Name; (iii) Respondent’s improper copying of material from Complainant’s website and Respondent’s admitted history of animosity toward Complainant by Respondent showing actual malice and ill will; and (iv) the incorporation of Complainant’s entire Mark without fair use, creating an absence of any plausible use of the Domain Name that would constitute good faith.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <walmartfacts.biz> is confusingly similar to Complainant’s registered Mark WAL-MART, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: April 10, 2005