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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu

Case No. D2006-1502

 

1. The Parties

The Complainant is Wal-Mart Stores Inc., of Bentonville, Arkansas, United States of America, represented by Ballard Spahr Andrews & Ingersoll, LLP, United States of America.

The Respondent is Sok Kyu Kim, of Los Angeles, California, United States of America, represented by Law Offices of Kubba & Reynolds, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <samsclub.net> is registered with HANGANG Systems Inc. dba Doregi.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2006. On November 27, 2006, the Center transmitted by email to HANGANG Systems Inc. dba Doregi.com a request for registrar verification in connection with the domain name at issue. On November 29, 2006, HANGANG Systems Inc. dba Doregi.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. 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 December 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2006. The Response was filed with the Center on December 28, 2006.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on January 19, 2007. 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

SAM’S CLUB has been used by the Complainant since as early as 1983.

The Complainant owns registered trademarks for SAM’S CLUB (U.S. Registration No. 2,36,770) (Korean Nos. 50083 and 63799); SAM’S CLUB (in Korean characters) (Korean Nos. 61416 and 63798); SAM’S CLUB & Design (U.S. Application No. 78/960,286); SAM’S WHOLESALE CLUB & Design (U.S. Registration No. 1,383,737) (collectively, the “SAM’S CLUB Marks”).

The domain name <samsclub.com>, currently registered with the Complainant and used in the Complainant’s business, was originally registered on August 11, 1995, and has been continuously associated with the Complainant’s business since that time.

The Complainant has promoted the SAM’S CLUB Marks and the domain name <samsclub.com> globally.

Sam’s Club is the largest warehouse club in United States of America.

There are twenty-four Sam’s Club locations within 100 miles of the Registrant’s original Los Angeles, California, USA addresses.

The Respondent has spent a significant amount of time in both the United States of America and in the Republic of Korea.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

The domain name consists of the word “samsclub”, which is identical to the Complainant’s U.S. well-established trademark and domain name. The only difference between the Complainant’s mark and the disputed domain name is the addition of a generic top level domain extension “.net”.

The use of a trademark in its entirety is sufficient to establish confusing similarity and that the addition of a top level domain extension to an identical mark is insufficient to escape a finding of such similarity In this case, the Respondent’s second level domain name is identical to the SAM’S CLUB mark, thereby creating confusing similarity between the domain name and the Complainant’s trademark. This confusion is not obviated by the addition of genetic top level domain extension such as “.Net”.

In addition to the similarity between the domain name and the Complainant trademarks and domain name, Respondent’s domain name offers links to products and services that are competitive with those provided under the Complainant’s mark.

The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent has never been authorized by the Complainant to use the SAM’S CLUB marks in any way.

The Respondent has no legitimate interests in the domain name given that the domain name was registered after the Complainant had registered its SAM’S CLUB marks and had established extensive goodwill.

The domain name does not reflect the Respondent’s common name.

As the Respondent’s website lacks any substantive content of its own, Respondent’s website is a link farm. It is well-established that the operation of a link farm is not a bona fide offering of goods and services within the meaning of the UDRP, and therefore cannot confer upon the Respondent any legitimate interests in the domain name by virtue of its existence.

The domain name has been registered and used in bad faith.

The domain name is a link farm engaged in spamdexing. This illegitimate business front for the website, coupled with the obvious solicitation for “inquiries” and the well-known nature of the Complainant’s brand, provides strong evidence that the Respondent has “registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant…or to a competitor, for valuable consideration in excess of its documented out-of-pocket costs.

The Respondent has no colorable argument that he is unaware of the SAM’S CLUB brand.

The Respondent has a history of registering domain names that are confusingly similar to the marks of others.

B. Respondent

The Respondent contends the following:

The Respondent registered <samsclub.net> on October 22, 2003 as the location for a personal website such as a blog. The Respondent had no knowledge of the Complainant’s marks at the time of registration. The Respondent parked the domain name with TrafficZ in the same manner he parked all other undeveloped domain names.

The Complainant did not use the Complainant’s marks until August 8, 1990.

The Complainant is unable to meet its burden demonstrating that the Respondent does not have rights or legitimate interests in respect of the domain name.

The Respondent’s intention was to develop an online community or club that was centered on his life, thoughts or opinions.

The Respondent need not demonstrate that he has superior rights or legitimate interests to the Complainant in respect of the domain name. The Respondent need only show that he has some right or legitimate interests in respect of the domain name and he has done so. The Respondent has demonstrated that his name is Sam and the domain name is composed of this name “sam” and a generic term “club”.

The Complainant is unable to demonstrate that the Respondent registered the domain name in bad faith because the Respondent was unaware of the Complainant’s marks at the time of registration.

There are only two Sam’s Club locations within twenty miles of the Respondent’s initial address in United States of America and both of these locations are over nineteen miles away.

The mere offering of a domain name for sale is neither illegal nor contrary to the Policy.

The inclusion of the inquiry link and inquiry form on the website at does not constitute an offer by the Respondent to transfer the domain for consideration.

Any prior proceedings involving the Respondent and domain names in his portfolio that allegedly infringes upon third party trademarks do not demonstrate the Respondent’s intent in his registration and use of the domain name in the present action.

In the present action, there is no such evidence that the Respondent attempted to transfer the registration of the domain name for valuable consideration to the Complainant or one of its competitors.

The Respondent parked the domain name with TrafficZ in order to better manage his domain portfolio until he was able to develop the domain.

 

6. Discussion and Findings

A. Selection of Language of Proceeding

The Complaint was filed in the English language. It is noted that the language of the registration agreement for the disputed domain name is Korean.

According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the registration agreement of the disputed domain name is in the Korean language. However, it is apparent from the fact that the Respondent is located in United States of America, is represented by an American law firm and that the Response was submitted in English, that he has sufficient ability to communicate in the English language.

In view not to unduly delay the proceeding, in consideration of the above circumstances and in the interest of fairness to both Parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark;

(ii) the 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.

C. Identical or Confusingly Similar

The domain name incorporates the Complainant’s registered trademark. Numerous WIPO UDRP panels have held that where a domain name substantially incorporates the complainant’s trademark, it is sufficient to find that the domain name is “confusingly similar” within the meaning of the Policy. See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678; Nicole Kidman v. John Zuccarini, d/b/a/ Cupcake Party, WIPO Case No. D2000-1415; Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313.

Moreover, the addition of a generic top-level domain name extension such as “.com” is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark. See, e.g., Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416. In this case, the only difference between the Complainant’s mark and the domain name is the addition of the top level domain extension “net”.

The Panel notes that the Respondent does not contest that the domain name is confusingly similar to the Complainant’s marks.

For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s marks pursuant to the Policy, paragraph 4 (a)(i).

D. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, “once a complainant establishes prima facie evidence 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” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent is not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven, and that the mere assertion that a part of the Respondent’s name is Samuel is not persuasive evidence that the Respondent has been commonly known by the domain name.

The Panel finds that Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy.

Accordingly, the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(b) of the Policy.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out, by way of example, a list of circumstances which, if found to be present by a panel, should be treated as evidence of registration and use of a domain name in bad faith.

The Panel notes that both under past WIPO UDRP decisions (See for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is widely known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s known marks and claims of rights thereto (see paragraph 2 of the Policy). In this case, the Complainant is one of the world’s largest private employers. At the time of registration, the Complainant’s marks were registered in both the United States of America and the Republic of Korea, and the Complainant had thousands of employees in both countries. Further, the Respondent’s link - “inquire about the domain name” - at the website of the disputed domain name and the fact that the website displays links for products and services that are competitive with the Complainant’s product and services, in the Panel’s view, trumps any disclaimer notice included on the website. The Panel further notes the Respondent’s history of registering domain names that are confusingly similar to the marks of others and holds the view that this is relevant to the weight and credibility given to the Respondent’s contentions. The Respondent’s contention that he was unaware of the Complainant’s marks at the time of registration are, in the Panel’s view, not credible.

In light of the above, the Panel concludes that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith.

 

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, <samsclub.net>, be transferred to the Complainant.

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Thomas P. Pinansky
Sole Panelist

Dated: February 9, 2007