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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Consolidated Motors, Inc.

Case No. D2006-0547

 

1. The Parties

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

Respondent is Consolidated Motors, Inc., Arizona, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <walmartautosales.net> (the “Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2006. On May 1, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On May 2, 2006, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 8, 2006. The Center verified that the Complaint and the Amendment thereto 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 Respondent of the Complaint, and the proceedings commenced on May 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29,2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 30, 2006.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on June 23, 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 states as follows:

“Complainant is the world’s largest retailer. Wal-Mart operates approximately more than 1200 Wal-Mart stores and more than 1900 Wal-Mart Supercenters, among others, throughout the United States and approximately 1700 Wal-Mart Stores and Supercenters internationally…. Complainant also makes extensive use of the Internet and operates websites at various locations including www.walmart.com, www.wal-mart.com and www.walmartstores.com. These websites give Wal-Mart consumers the opportunity to shop online for goods and services. These websites are arranged in various product categories. The websites are an important part of Complainant’s business and contribute to Complainant’s online identity and brand.

In conjunction with operating Wal-Mart stores in the United States, Complainant owns various United States federally registered marks, as well as registered marks around the world, including the following:

- WAL-MART, Registration No. 1,783,039, issued July 20, 1993.

- WAL-MART FOR ALL YOUR NEEDS, Registration No. 2,875,241, issued August 17, 2004.

- WAL-MART NEIGHBORHOOD MARKET, Registration No. 2,870,960, issued August 10, 2004.

- WAL-MART TIRE AND LUBE EXPRESS and design, Registration No. 2,878,947, issued August 31, 2004.”

The Domain Name was created on April 7, 2006.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that “[t]here is clear similarity between the Registrant’s domain name and Complainant’s mark” and that “[i]t is well-settled that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar.”

Complainant contends, as set forth in more detail below, that “Respondents have no rights or legitimate interests with respect to the [Domain Name]”.

Complainant contends that the Domain Name was registered in bad faith and that it was registered by Respondent “only after a WIPO proceeding was instituted against him in regards to his registration of “www.walmartautosales.com”.”¹ Complainant further contends that while such proceeding was pending, “Respondents telephoned Complainant, on April 7, 2006, and bragged that even though the domain name www.walmartautosales.com was ‘frozen’ due to the WIPO proceeding they had registered another domain name, <walmartautosales.net>. After the WIPO decision was entered [in WIPO Case No. D2006-0085], on April 26, 2006, Respondents again contacted Complainant and offered to transfer both <walmartautosales.com> and <walmartautosales.net> for $1500.00”².

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.(Policy, Paragraph 4(a)).

A. Identical or Confusingly Similar

Based upon the U.S. trademark registrations cited by Complainant (supported by printouts from the U.S. Patent and Trademark Office’s website for the Trademark Electronic Search System), it is obvious that Complainant has rights in the WAL-MART mark.

As to whether the Domain Name is identical or confusingly similar to Complainant’s WAL-MART mark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “walmartautosales”), as it is well-established that the top-level domain name (i.e., “.net”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

The Panel agrees with the decision in Wal-Mart Stores, Inc. v. Consolidated Motors, Inc./Van Flury, WIPO Case No. D2006-0085, involving the identical second-level domain as in this case, in which the panel wrote:

“Respondent’s disputed domain name incorporates Complainant’s mark in its entirety, adding only the descriptive terms “auto sales” and the generic top-level domain “.com”. Neither of these additions to Complainant’s mark negates the confusing similarity between the disputed domain name and Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (March 23, 2001), (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000), (finding that “[n]either the addition of an ordinary descriptive word… nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus the Policy, paragraph 4(a)(i) is satisfied).”

The difference between the top-level domain “.com” in the cited case and “.net” in the instant case is irrelevant. Therefore, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that “Respondents have no rights or legitimate interests in respect to the domain name www.walmartautosales.net. To the best of Complainant’s knowledge and belief, Respondents have no rights to any trademark consisting of the terms WALMART in any country. The Respondents do not commercially use the term WALMART in the course of trade or in connection with a bona fide offering of goods and services, but does use the term WALMART for commercial gain. Complainant believes that Respondents are not commonly known by its registered domain name. Instead, Respondents are using the domain name www.walmartautosales.net to misleadingly divert Complainant’s consumers to its website and to tarnish Complainant’s business. Complainant clearly intends to profit from his registration of this domain name without having any legitimate interests or legitimate rights to the famous Wal-Mart mark.”

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, <http://www.wipo.int/amc/en/domains/search/overview/index.html> (visited July 3, 2006).

Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. (Policy, paragraph 4(b)).

In this case, Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist and evidence bad faith. Instead, Complainant relies on its allegations that Respondent registered the Domain Name only after Complainant filed its complaint in Wal-Mart Stores, Inc. v. Consolidated Motors, Inc./Van Flury, WIPO Case No. D2006-0085; that Respondent offered to transfer the Domain Name (and the domain name <walmartautosales.com>) to Complainant for $1,500.00; and that Respondent had constructive and actual notice of Complainant’s rights to the WAL-MART trademark.

The Panel agrees with the decision in Wal-Mart Stores, Inc. v. Consolidated Motors, Inc./Van Flury, WIPO Case No. D2006-0085, involving the identical second-level domain as in this case, in which the panel wrote:

“Complainant operates thousands of retail stores throughout the United States and in many other countries. WAL-MART is a very well-known mark and, therefore, the Panel finds that Respondent had actual knowledge of Complainant’s trademark rights. Respondent also had constructive notice as a matter of law of Complainant’s trademark rights in the WAL-MART Mark. Respondent could not have registered the infringing domain name with the intention of using them legitimately. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551 (February 4, 2001), (“active or constructive knowledge of the Complainant’s rights in Trademarks is a factor supporting bad faith”); see also Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000), (as a matter of United States law, respondent had prior constructive or actual knowledge of complainant’s trademark because the mark was registered).”

Therefore, the Panel is satisfied that Complainant has proven the third element required by the Policy by registering and using the Domain Name as set forth in the Policy, paragraph 4(b).

 

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 <walmartautosales.net> be transferred to Complainant.

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Douglas M. Isenberg
Sole Panelist

Dated: July 3, 2006

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¹ Wal-Mart Stores, Inc. v. Consolidated Motors, Inc./Van Flury, WIPO Case No. D2006-0085.

² Complainant provides what it describes as “a copy of this communication” as an exhibit to its Complaint. However, the exhibit is only an exchange of e-mails relating to a discussion about adding the domain name <walmartautosales.net> to the proceeding involving the domain name <walmartautosales.com>. The exhibit contains no information in support of Complainant’s contention that Respondent offered to transfer either of these domain names to Complainant for a fee. In the absence of such a document, the Panel would have preferred to see a sworn statement in support of these facts from an individual associated with Complainant. (Although Complainant’s counsel certifies, as required under the Policy, that the information in the Complaint “is, to the best of the Complainant’s knowledge, complete and accurate,” a statement from the individual associated with allegedly contacted by Respondent would have been appropriate.) Nevertheless, as set forth below, the improperly described exhibit and freestanding allegations are irrelevant to the outcome of this case.