|Complainant||Wal-Mart Stores Inc.|
|Respondent||Cornerstone Marketing Group|
|Panelist||Halket, Thomas D.|
|Date of Decision||31.10.2008|
The Complainant is Wal-Mart Stores Inc. of the United States of America, represented by Kenyon & Kenyon of the United States of America.
Complainant alleged that the Respondent is Preston White, Cornerstone Marketing Group, of the United States of America. The Panel finds that the Respondent is Cornerstone Marketing Group, of the United States of America for which Preston White is the administrative contact for the domain name in dispute here.
The disputed domain name <1800walmart.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2008. On August 15, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 15, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 16, 2008.
The Center appointed Thomas D. Halket as the sole panelist in this matter on October 17, 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.
Established in 1962, Complainant is now one of the largest retailers in the world. Worldwide, it has over 6,700 stores, more than 2.1 million employees worldwide and serves over 200 million customers a year.
Complainant is the owner of U.S. Trademark Reg. Nos. 1,783,039 and 1,322,750 for, respectively, WAL-MART and WAL-MART and Design, for use in connection with “retail department store services.” Complainant's rights in these marks date back to at least 1962. These marks have become famous by virtue of Complainant's longstanding use of them. Complainant makes extensive use of its WAL-MART trademark on the Internet, such as in the domain names and website content for Complainant's websites located at “www.walmart.com”, “www.wal-mart.com”, “www.walmartstores.com”, and “www.walmartfacts.com”. Complainant has also been using these marks, including in its advertised toll-free telephone number at 1-800-WAL-MART, and its websites, since long prior to the Respondent's registration and use of the Disputed Domain Name on October 5, 2006.
Preston White is an incorporator of Umbrella Technologies, Inc. which is the parent company of Respondent. Preston White is also the administrative contact for the Domain Name. It appears that Umbrella Technologies also owns other domain names such as <1800wdisney.com>, <disneycruisetickets.com>, <iphonestore.ws>, <disneyvacationrental.net>, <carnivalcruisetickets.info>, <barack-obama.us>, <hillary-clinton.biz>, and <john-edwards.net>.
On or about July 1, 2008, Complainant learned of the registration and use of the Domain Name. When Complainant requested that Respondent transfer the Domain Name, Respondent refused and instead demanded USD 4,400 for its sale.
(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(c) The Domain Name was registered and is being used by Respondent in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
“(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and, (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.”
Paragraph 4(b) provides that for the purposes of Paragraph 4(a)(iii) the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you [the Respondent] 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 web site 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 web site or location or of a product or service on your web site or location.”
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. At the very least, the Domain Name is clearly confusingly similar to Complainant's famous WAL-MART mark. The Domain Name incorporates in its entirety that mark, with the addition of only some numbers. Under such circumstances, Panels have had no trouble finding that the first prong of the 4(a) test was met. 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 (March 24, 2000) and Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thornton, d/b/a Machines & More, WIPO Case No. D2000-0006 (February 28, 2000). This Panel agrees.
The additional numbers “1-800” are, however, also telling. As such, the Domain Name is also identical to Complainant's “1-800” phone number. The Panel believes that these facts would also justify a finding that the first prong of the 4(a) test was met. Indeed, another case has addressed almost exactly the same set of facts and reached the same conclusion. In RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001), the respondent was required to transfer <1800redroof.com>, <1888redroof.com> and <1877redroof.com> to the complainant, the trademark owner of the RED ROOF and RED ROOF INN marks. As here, the complainant there owned and used all three of the disputed domain names as toll-free telephone numbers. As here, the disputed domain names used the entirety of complainant's trademark. Also as here, there was no explanation from the respondent why it selected the disputed domain names. In finding for the complainant, the panel pointed to:
“(i) constructive knowledge by Respondent of Complainant's rights in the RED ROOF Trademarks upon the registration of the Domain Names; (ii) Respondent's failure to positively respond to Complainant's request for transfer; and (iii) the use of Complainant's entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith.”
The second prong of the 4(a) test also has been met by Complainant. There is no evidence that Complainant has ever authorized Respondent to use or register the Domain Name. Nor is there any evidence that Respondent has used it in connection with a bone fide offering of goods or services. These facts, standing alone, would be a sufficient basis for Complainant establishing a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name.
Moreover, the Panel has found that the Domain Name is confusingly similar to Complainant's famous mark. As such, and in the absence of any evidence to the contrary, it is reasonable to assume, and the Panel hereby finds, that Respondent must have been aware of the mark when it registered the Domain Name and Respondent did so in an attempt to cause confusion and to “free ride” off of the mark. A number of panels have in similar circumstances found that respondents there had no right or legitimate interest in the disputed domain names. See Carfax, Inc. D/B/A Carfax v. Setyo Djoenaaedi & Associates, WIPO Case No. D2001-0986 (September 24, 2001); Madonna Ciccone, p/k/a/ Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (October 12, 2000). Again, this Panel agrees.
Finally, the Panel finds that the third prong of the 4(a) test has been met by Complainant. Based on the weight of the undisputed evidence it is more than reasonable to assume, and the Panel hereby finds, that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for amount substantially in excess of the out-of-pocket costs directly related to the Domain Name. Therefore, the Panel finds that Respondent has violated paragraph 4(b).
This Panel has already concluded that the Respondent must have been aware of Complainant's famous mark when it registered the Domain Name and that it therefore had no right or legitimate interest in the Domain Name. Under such circumstances (and coupled with Respondent's offer to sell the Domain Name for an amount which, given the undisputed evidence that exists and without any evidence to the contrary having been put forth by the Respondent, appears to be in excess of Respondent's out-of-pocket costs for the Domain Name) it is reasonable to assume that the Respondent violated paragraph 4(b). See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) and Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074 (November 28, 2000). The fact that Respondent's parent seems to be engaged in a similar course of conduct with many other domain names which incorporate other famous marks or names only supports this conclusion.
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, <1800walmart.com> be transferred to the Complainant.
Thomas D. Halket
Dated: October 31, 2008