WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wal-Mart Stores, Inc. v. Walter Nayda
Case No. D2008-1265
1. The Parties
Complainant is Wal-Mart Stores, Inc., Bentonville, Arkansas, United States of America, represented by Haynes and Boone, LLP, United States of America.
Respondent is Walter Nayda, Mt. Baldy, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <1800samsclub.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. On August 19, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On August 19, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on August 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 12, 2008.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on September 22, 2008. 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 Wal-Mart is a large retailer offering a wide variety of products and services in the apparel, food, electronics, toys, sports, fitness, books, music, furniture, pharmacy, home products, automotive, financial, and other industries through both retail and online stores. Complainant operates approximately 594 stores in the United States of America and about 100 stores internationally under the SAM'S CLUB mark.
Complainant owns several live trademark registrations on the United States Patent and Trademark Office (USPTO) Principle Register for SAM'S CLUB and related formative marks in connection with retail services, including but not limited to: (1) Registration No. 2,036,770 for SAM'S CLUB, based on first use as early as August 8, 1990 and registered February 11, 1997; (2) Registration No. 1,922,419 for SAM'S CLUB DIRECT, based on first use as early as October 1993 and registered September 26, 1995; (3) Registration No. 2,359,426 for SAM'S CLUB SOURCE, based on first use as early as October 1998 and registered June 20, 2000; and (4) Registration No. 2,396,544 for SAM'S CLUB ELITE, based on first use as early as November 1999 and registered October 17, 2000. These registrations are current and incontestable.
Complainant uses the SAM'S CLUB mark on its Sam's Club buildings and in advertising associated with its Sam's Club stores. Complainant makes further use of the SAM'S CLUB mark and variations thereof on the Internet, such as in the domain names and website content of Complainant's websites located at “www.samsclub.com”, “www.samsclubauto.com”, and “www.samsclubmemberservices.com”.
Respondent registered the Domain Name on July 11, 2003. The Domain Name resolves to a parked site, with links that change each time the web page is refreshed. Each link on the website at <1800samsclub.com> leads to a commercial website. For instance, on the right-hand side of the page is a “Related Searches” box, with links that, in many instances, lead to websites promoting Complainant's direct competitors.
On March 26, 2008, Complainant, through counsel, sent Respondent a demand letter by Certified Mail/Return Receipt Requested and e-mail using the contact information Respondent had provided to the registrar. In the letter, Complainant informed Respondent of Complainant's rights in the SAM'S CLUB marks; stated that Respondent's use and registration of the Domain Name constituted cybersquatting, trademark infringement, dilution of the marks, and false designation of origin; and asserted that Respondent must cease and desist his unlawful use and transfer the Domain Name to Complainant. The letter and e-mail to one address were returned because the addresses were invalid and incorrect. Respondent did not reply to the email sent successfully to another address.
5. Parties' Contentions
The Domain Name is confusingly similar to the SAM'S CLUB marks as it incorporates in its entirety Complainant's well-known and distinctive marks .
Complainant contends that it is the world's largest retailer, as well as one of the fifteen largest companies in the world, with more than $370 billion in sales last fiscal year and ranked first on the current list of FORTUNE 500 companies. It operates hundreds of stores in the United States and internationally using its registered SAM'S CLUB trademark and variants of that mark and that, as a result of its extensive and exclusive use of the SAM'S CLUB mark, and millions of dollars in advertising, the SAM'S CLUB mark has acquired valuable goodwill and reputation.
Complainant contends that Respondent has appropriated Complainant's well-known SAM'S CLUB mark in the Domain Name, rendering the confusingly similar to Complainant's SAM'S CLUB mark. The mere addition of “1800” to the trademark, Complainant asserts, does not defeat a claim of confusing similarity. Additionally, neither the deletion of an apostrophe nor the deletion of a space from the trademark is sufficient to render the Domain Name different from the mark. The mere addition of a TLD to a trademark also does not negate the otherwise identical nature of two terms.
Respondent has no rights or legitimate interests in the Domain Name
Respondent is not using the Domain Name for a bona fide offering of goods or services, nor is Respondent making legitimate noncommercial or fair use of the Domain Name.
Complainant contends that there is no evidence that Respondent ever has had a bona fide interest in establishing any legitimate business or activities under the Domain Name or any variant thereof. Rather, Complaint asserts, Respondent's demonstrated purpose and use of the Domain Name is to confuse and divert consumers to its site in order to aggregate advertising revenue through the use of sponsored links, thereby exploiting the SAM'S CLUB mark for his own profit.
Complainant further contends that Respondent has never made any real use of the Domain Name other than to hoard it, redirect to third-party websites, and park it with a revenue generating service. Panels have frequently held that such a holding of a domain name demonstrates that the domain name is not being used for a bona fide offering of goods or services under Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).
Complainant has never consented to Respondent's use of the SAM'S CLUB mark, nor has it ever given Respondent permission to use Complainant's SAM'S CLUB Mark for any reason whatsoever.
Complainant states that it has never consented to Respondent's use of the SAM'S CLUB Mark and that, upon learning of the registration of the Domain Name, Complainant urged Respondent to transfer the Domain Name immediately.
Moreover, Respondent has not expressed any legitimate interest or rights in the Domain Name. Respondent never provided Complainant any claims or information supporting any right to own or use the Domain Name.
Respondent is not commonly known by the Domain Name
Complainant contends that the Domain Name does not consist of Respondent's legal name or a name by which Respondent is otherwise commonly identified. The fact that “nothing in Respondent's WHOIS information implies that Respondent is ‘commonly known by' the disputed Domain Name” is one factor in determining that Policy, paragraph 4(c)(ii) does not apply.
Complainant concludes from the foregoing that Respondent is not making a legitimate use of, nor does he have any rights or legitimate interests in, the Domain Name.
Respondent registered and is using the Domain Name in bad faith
Respondent's knowledge of Complainant's SAM'S CLUB Marks supports a finding of bad faith.
Complainant contends that Respondent had at least constructive knowledge of Complainant's SAM'S CLUB marks by virtue of their registration on the Principal Register of the U.S. Patent and Trademark Office.
Further, Complainant contends that the SAM'S CLUB marks are not generic or descriptive terms. Rather, the distinctive and unique SAM'S CLUB marks were coined by Complainant, have been used by one of the largest corporations in the world for more than eighteen years, and had achieved a high level of global fame before Respondent registered the Domain Name. It is inconceivable, Complainant says, that Respondent did not have knowledge of Complainant's SAM'S CLUB marks before Respondent registered the Domain Name.
Complainant contends that such knowledge of Complainant's rights and Respondent's willingness to blatantly profit from them, underscore Respondent's bad faith use and registration of the Domain Name.
Respondent's intent to divert customers from Complainant's legitimate sites for its own commercial gain, by creating confusion with the SAM'S CLUB marks, constitutes evidence of bad faith registration and use of the Domain Name.
Complainant contends that because Respondent uses the Domain Name to provide links to websites that promote products and services competitive to those offered by Complainant, consumers searching for information concerning Complainant are likely to become confused as to whether Respondent is connected, affiliated or associated with, or sponsored or endorsed by Complainant.
Complainant contends that the various website owners who are linked through the Domain Name provide monetary compensation for the placement of their addresses and sites on the website at “www.1800samsclub.com”. This compensation, Complainant contends, is based on the number of times that Internet users reach their websites through accessing Respondent's site. Accordingly, Respondent receives a direct financial benefit from its diversion of Complainant's potential customers to the website at “www.1800samsclub.com”. By creating a likelihood of confusion with the SAM'S CLUB marks by unlawfully capitalizing on the name recognition and goodwill of the SAM'S CLUB marks to divert Internet traffic to his site, Respondent has registered and has been using the Domain Name in bad faith.
Respondent has no intellectual property rights in the Domain Name and has not responded to Complainant to assert any such rights.
Complainant further contends that Respondent's current use of the Domain Name merely to “park it” does not constitute a bona fide offering of goods and services.
Respondent has clearly shown that he has no legitimate rights or interests in the Domain Name and has never advanced an argument to Complainant to the contrary. This also evidences bad faith.
Respondent showed bad faith in providing false contact information to the Registrar.
Respondent provided an incorrect and invalid address to the registrar when he registered the Domain Name, which is evidence of bad faith.
Respondent's violation of his Registration Agreement evidences bad faith.
Complainant contends that because Respondent had knowledge of Complainant's SAM'S CLUB marks when he registered the Domain Name, Respondent falsely represented that his registration of the Domain Name did not infringe the legal rights of any third party, he acted in bad faith by breaching his Registration Agreement with the registrar.
Respondent did not reply to the Complainant's contentions.
6 Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and in hard copy by mail to Respondent at the addresses provided in Respondent's registration information. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint, Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable, Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent's 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) Respondent's Domain Name was registered and is being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
Complainant has established that it has legal rights in the SAM'S CLUB trademark and several other formative marks based on the SAM'S CLUB mark by reason of registration of the marks on the USPTO Principal Register and long-term use of the marks in commerce.
Respondent's Domain Name is confusingly similar to Complainant's SAM'S CLUB trademark. The Domain Name incorporates Complainant's mark in its entirety with correct spelling. 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 (4th ed. 2005). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Eastman Chemical Company v. Manila Industries, Inc., NAF Case No. 450806; Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc., NAF Case No. 444468. This is what Respondent has done here.
The numbers “1800” added to Complainant's trademark are the same as the standard prefix for a toll-free long distance telephone call, commonly used in the United States of America by numerous commercial enterprises. The numbers are non-distinctive and in fact tend to suggest access to a website belonging to Sam's Club and providing information concerning telephone access to that company and its goods or services. See Wal-Mart Stores, Inc. v. Steve Powers, WIPO Case No. D2003-1051 (adding the prefix “1-800” does not result in differentiating or distinguishing the domain name from the WAL-MART mark); General Electric Company v. Pars International Computer, Inc., WIPO Case No. D2000-0368 (finding that <1-800-ge.com> is confusingly similar to the GE mark because combining the prefix “1-800” with “GE” creates the impression that this domain name is associated with a toll-free telephone number for General Electric).
Other minor differences between Complainant's trademark and the Domain Name, including deletion of an apostrophe from the trademark and deletion of the space between words appearing in the trademark, are likewise insufficient to distinguish the two or negate confusing similarity. See L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437 (<lorealrecalls.com>, <lorealrecall.com>, <loreal-recall.com> and <loreal-recalls.com> are confusingly similar to the L′OREAL mark because “the suppression of the apostrophe is due to technical reasons which prevent the registration of domain names with an apostrophe and does not give any distinctiveness to the disputed domain names”); Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502 (<samsclub.net> confusingly similar to the mark SAM'S CLUB); Deutsche Post AG v. Liu Shen, WIPO Case No. D2008-0294 (<deutschepost.mobi> is confusingly similar to the marks DEUTSCHE and POST even though the space between the marks is absent in the domain name).
Finally, the top level domain does not negate identity or confusing similarity. See VAT Holding AG v. vat.com, WIPO Case No. D2000-0607 (finding <vat.com> identical to VAT mark).
Complainant demonstrates the confusing similarity of the Domain Name and Complainant's trademarks and thus establishes the first element of its case.
B. Rights or Legitimate Interests
Complainant must show that Respondent has no rights or legitimate interests in the Domain Name. Policy, paragraph 4(a)(ii). Complainant makes a prima facie case that this is the fact here.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent is using the Domain Name to divert Internet users from what appears from the domain name to be a website associated with Complainant to a website which in fact is not associated with Complainant in any way, which is parked with the registrar and which provides links to a variety of unrelated goods and services, including in some instances, to Complainant's direct competitors. Respondent presumably earns some form of click-through revenues from this website. This is essentially a commercial activity premised upon a misleading exploitation of another's valuable trademark and cannot be considered a bona fide offering of goods or services. See, e.g., Abraxis BioScience, LLC v. Les Rubin, WIPO Case No. D2008-0066; Société Air France v. Paula O'Rourke/WhoisProtector Inc., WIPO Case No. D2007-0014 (finding no rights or legitimate interests in domain directed to parked website containing links to various other sites); Dart Industries Inc. v. Leslie Rubin, WIPO Case No. D2006-0146; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Beemak Plastics, Inc. v. WestRep Group, WIPO Case No. D2001-1023 (no rights or legitimate interests where the domain name at issue resolved to complainant's competitor's website at which products were offered for sale that directly competed with complainant's trademarked products).
Complainant has not consented to Respondent's use of the SAM'S CLUB marks. See Société des Produits Nestle S.A. v. Cook, WIPO Case No. D2002-0118; Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; Six Continents Hotels, Inc. v. Patrick Ory, WIPO Case No. D2003-0098 (“Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”); Sanrio Company Ltd v. Neric Lau, WIPO Case No. D2000-0172 (interests in the domain name not legitimate where there is no authorized association with trademark owner). There is no indication in the record that the Domain Name reflects Respondent's legal name or a name by which Respondent is commonly identified, and, in fact, the record suggests that this is not the case. See Tercent Inc. v. Yi, NAF Case No. FA 139720.
Finally, the nature and content of Respondent's website shows further that Respondent is making neither a fair nor a noncommercial use of the Domain Names Policy, paragraph 4(c)(iii). Respondent is using the Domain Name to direct potential Sam's Club customers to a website that provides for further diversion to unrelated, but in many instances competitive, commercial sites, presumably for Respondent's own commercial benefit. Six Continents Hotels, Inc. fka Bass Hotels & Resorts, Inc. v. Cortlandt Colonial Restaurants and Receptions, WIPO Case No. D2003-0292 (“Respondent's chosen use of the domain names to promote services arguably competitive to, and certainly related to Complainant's services, dispels any doubt as to the lack of fair use and the commercial nature of Respondent's unauthorized use); Morgan Stanley v. Blog Network Int'l, NAF Case No. FA 564204 (no legitimate noncommercial or fair use where the domain name resolved to a website that allowed Internet users to purchase domain names, as well as provide links to unrelated commercial websites from which respondent presumably received referral fees).
Respondent has not come forward with any evidence or argument to rebut Complainant's substantial prima facie case. The Panel concludes, therefore, that Respondent has no rights or legitimate interests in the Domain Name and that Complainant has proved the second element of its case.
C. Registered and Used in Bad Faith
Complainant must show that the Domain Name was registered and is being used in bad faith. Policy, paragraph 4(b)(iii).
The registration of a domain name that is confusingly similar to a famous trademark by a person who has no relationship to that mark may in itself constitute sufficient evidence of bad faith registration and use. Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). Complainant's widely-known SAM'S CLUB trademark clearly was used in registering the Domain Name by someone who has no apparent relationship to Complainant or the mark.
Respondent clearly had knowledge of Complainant's mark when he registered the Domain Name. He had at least constructive knowledge of the SAM'S CLUB mark by reason of the registrations on the USPTO Principal Register. 15 U.S.C. 1072; Costco Wholesale Membership, Inc. and Costco Wholesale Corporation v. Alamantas Kakareka and Hostmaster Oneandone, 1 & 1 Internet, Inc., WIPO Case No. D2007-1833; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. Moreover, the SAM'S CLUB mark is not generic or descriptive; it is distinctive and has been used by one of the largest corporations in the world for more than eighteen years, and was widely known nationally in the United States of America and internationally before Respondent registered the Domain Name. See Wal-Mart Stores Inc. v. Sok kyu Kim, Sokkyu, WIPO Case No. D2006-1502 (finding SAM'S CLUB trademark is widely known worldwide); Pancil LLC v. Domain Deluxe, WIPO Case No. D2003-1035 (“it [is] inconceivable that Respondent chose the contested domain name without knowledge of Complainant's activities and the name and trademark under which Complainant is doing business”). There is thus sufficient reason to conclude that Respondent had actual knowledge of Complainant's SAM'S CLUB mark when he registered the Domain Name incorporating that mark.
Respondent's actual and constructive knowledge of Complainant's SAM'S CLUB trademark and his conscious decision to exploit it through the Domain Name leads to a conclusion of bad faith registration and use of the Domain Name. See Six Continents Hotels, Inc. v. Albert Jackson, WIPO Case No. D2003-0922; Marriott International, Inc. v Momm Amed Ia, NAF Case No. FA95573; Research In Motion Limited v. Dustin Picov, supra; Telstra Corporation Limited supra (“it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the [disputed] domain name”); Kate Spade LLC v. IQ Management Corporation, WIPO Case No. D2005-0109 (“Respondent knew what it was doing: registering another domain name that incorporated entirely in itself a highly publicized trademark belonging to a third party. This pattern of conduct falls under the category of bad faith.”)
The evidence further supports a finding of bad faith registration and use under paragraph 4(b)(iv) of the Policy. Respondent has intentionally attempted to attract Internet users to a website, for commercial gain, by creating a likelihood of confusion with the SAM'S CLUB trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or of a product or service on Respondent's website. Respondent is using Complainant's trademark to attract or divert Internet users searching for Complainant's goods and services to Respondent's website where links to unrelated, and in some cases competitive goods and services, are offered. This constitutes bad faith use of the Domain Name and evidences bad faith registration. See Accor v. Domains by Proxy, Inc. /Ostrid Co., WIPO Case No. D2008-0707 (finding bad faith where the respondent intentionally attempted to attract for commercial gain Internet users to the relevant websites by creating a likelihood of confusion with the [c]omplainant's trade mark as to the source, sponsorship, affiliation or endorsement or those website” through the domain names); Société Nationale des Chemins de Fer Français v. ostrid co, Domains by Proxy, Inc., WIPO Case No. D2008-0627 (respondent's use of confusingly similar domain name for pay-per-click website deemed bad faith registration and use); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (finding bad faith where respondent attempted to attract customers to its website and created confusion by offering for sale products similar to those of complainant).
The facts that Respondent has apparently supplied incorrect contact information to the Registrar, failed to respond to Complainant's correspondence, and failed to respond to the Complaint all lend additional, but not necessary, support to the Panel's conclusion here.
The Panel finds bad faith registration and use of the Domain Name and concludes that Complainant has established the third element of its case.
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, <1800samsclub.com> be transferred to Complainant.
John R. Keys, Jr.
Dated: October 6, 2008