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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Gerry Senker

Case No. D2006-0211

 

1. The Parties

Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Welsh & Katz, Ltd, United States of America.

Respondent is Gerry Senker, Marlton Pike, Pennsauken, New Jersey, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <competewithwalmart.com> is registered with Melbourne IT trading as Internet Names Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2006. On February 17, 2006, the Center transmitted by email to Melbourne IT trading as Internet Names Worldwide a request for registrar verification in connection with the domain name at issue. On February 20, 2006, Melbourne IT trading as Internet Names Worldwide transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (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 the proceedings commenced on February 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2006. The Response was filed with the Center on March 15, 2006.

Complainant requested a suspension of proceedings on March 17, 2006, and the parties were notified of the suspension by the Center on March 21, 2006. On April 19, 2006, Complainant requested an extension of the suspension, granted by the Center on April  20, 2006. On May 23, 2006, Complainant asked the Center to reinstitute the proceedings and filed a Supplemental Filing. The administrative proceedings were reinstituted by notification to both parties on May 24, 2006.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on May 26, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant is the world’s largest retailer and holds many trademark registrations for WAL-MART and related marks, dating back to at least 1993. Complainant operates websites and on-line retailing under <walmart.com> and other domain names.

 

5. Parties’ Contentions

A. Complainant contends that:

1. Respondent’s domain name <competewithwalmart.com> is confusingly similar to Complainant’s WAL-MART mark.

2. Respondent does not have any rights or legitimate interests in the <competewithwalmart.com> domain name.

3. Respondent registered and used the <competewithwalmart.com> domain name in bad faith.

B. Respondent contends that:

1. Respondent’s domain name <competewithwalmart.com> is not identical or confusingly similar to Complainant’s WAL-MART mark.

2. Respondent intends his website at <competewithwalmart.com> to be viewed by a limited number of retailers looking for business resources.

3. Respondent has not registered and used the <competewithwalmart.com> domain name in bad faith.

 

6. Discussion and Findings

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.

A. Identical or Confusingly Similar

Complainant clearly has rights in the trademark WAL-MART, which Respondent has not contested. Respondent has incorporated Complainant’s entire mark and simply omitted the hyphen and added the words “compete with”. The Panel finds that the mere addition of a descriptive term to Complainant’s registered mark does not adequately distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy paragraph 4(a)(i). See The Body Shop Int’l PLC v. CPIC NET and Syed Hussain, WIPO Case No. D2000-1214 (November 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). The omission of a hyphen from Complainant’s mark does not negate the confusing similarity of the disputed domain names to Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant’s mark).

The Panel finds that Policy paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Complainant has alleged that Respondent does not have rights or legitimate interests in the <competewithwalmart.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy paragraph 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Respondent attempts to meet this burden by merely stating that he intends the website at “www.competewithwalmart.com” to be viewed a limited number of retailers looking for business resources.

The Panel finds that Respondent is taking advantage of the confusing similarity between its domain names and Complainant’s mark for its own financial gain. Such use of the disputed domain names is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum September 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”)

The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Respondent is using the <competewithwalmart.com> domain name, which is confusingly similar to Complainant’s famous WAL-MART mark, to to redirect Internet users to Respondent’s commercial website selling store fixtures. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iii). See Paul Barnett Puckett, Individually and d/b/a Nature’s Window v. Christopher D. Miller, WIPO Case No. D2000-0297 (June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy, Paragraph 4(b)(iii)); See also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum August 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

The Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <competewithwalmart.com> be transferred to the Complainant.

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Sandra J. Franklin
Sole Panelist

Dated: June 9, 2006