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Wal-Mart Stores, Inc. v. G.W. / Mm Mmmm; John Doe

WIPO Case No. D2001-0277

Outcome
Transfer
Domain names
ewalmart.com
Complainant
Wal-Mart Stores, Inc.
Respondent
G.W. / Mm Mmmm; John Doe
Panelist
Mary Padbury
Decided
09 Jul 2001
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0277.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Wal-Mart

Stores, Inc v. G.W. and Mm Mmmm

Case No.

D2001-0277

1. The Parties

The Complainant is Wal-Mart

Stores, Inc, a United States corporation, of 702 Southwest Eighth Street, Bentonville,

Arkansas, USA.

The respondents are G.W.

and Mm Mmmm of 23 Oakfield Avenue, Glanmire, County Cork, Ireland ("the Respondent").

2. The Domain Name and

Registrar

The domain name, which

is the subject of the Complaint, is <ewalmart.com>.

The Registrar of the domain

name is Melbourne IT Limited of Level 2, 120 King Street, Melbourne, Victoria,

3000, Australia ("Melbourne IT").

3. Procedural History

The essential procedural

history of the administrative proceeding is as follows:

(a) The Complainant

initiated the proceeding by the filing of a Complaint, which was received by

the WIPO Arbitration and Mediation Center ("the Center") via e-mail

and in hardcopy on February 22, 2001. The Complainant elected to have the dispute

decided by a single member administrative panel.

(b) On February 27,

2001, the Center transmitted to Melbourne IT, via e-mail, a Request for Registrar

Verification in connection with the Complaint. On the same day, Melbourne IT

transmitted to the Center, via e-mail, Reply from Registrar. This stated that

the registrant is G.W. of 23 Oakfield Avenue, Glanmire. County Cork, Ireland,

that the administrative contact for the domain name is Mm Mmmm of the same address,

that the technical contact is Evan Weatherup of Elysium House, 126-128 New Kings

Road, Parsons Green, SW6 4LZ, London, United Kingdom and that the Uniform Domain

Name Dispute Resolution Policy ("the Policy") applies to this domain name.

(c) On February 28,

2001, the Center verified that the Complaint satisfies the formal requirements

of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy ("the

Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy of WIPO ("the Supplemental Rules") as required by Paragraph

4(a) of the Rules and Paragraph 5(a) of the Supplemental Rules. Payment in the

required amount has been made by the Complainant to the Center.

(d) On March 1, 2001,

the Center sent the Notification of Complaint and Commencement of Administrative

Proceeding and Complaint to the Respondent by post/courier (with enclosures)

and email (using details of the domain name registrant, administrative contact,

technical contact, zone contact and billing contact). The Center advised that

the Response was due by March 20, 2001.

(e) No Response was

received from the Respondent by the due date of March 20, 2001. On

March 22, 2001, Notification of Respondent Default was sent to the Respondent

by email using the same contact details and methods as were used for the Notification

of Complaint. No reply by the Respondent to the Notification of Respondent Default

was received.

(f) Having received

a Statement of Acceptance and Declaration of Impartiality from the Panelist,

the Center transmitted to the parties a Notification of Appointment of Administrative

Panel on April 2, 2001. The Projected Decision Date was April 15, 2001. The

Panelist sought an extension in accordance with Paragraph 15(b) of the Rules.

(g) Having reviewed

the communication records in the case file, the Panelist finds that the Center

has discharged its responsibility under Paragraph 2(a) of the Rules "to

employ all reasonably available means calculated to achieve actual notice to

Respondent". As such, the Panelist’s decision is based upon the Complaint,

the Policy, the Rules and the Supplemental Rules without the benefit of any

Response from the Respondent.

4. Factual Background

- The Complainant

The Complainant is Wal-Mart

Stores, Inc. It is the owner of US Trademark Registration Number 1,783,039,

registered July 20, 1993, for the mark WAL-MART for retail department

store services in class 42. A copy of the registration is attached to the Complaint

(Annex C). This registration is based on first use of the mark on July 1, 1962.

The Complainant also holds registrations for the WAL-MART mark in 46

countries. These rights pre-date the Respondent's registration of the domain

name in issue.

The Complainant currently

operates some 3000 stores and offices throughout the United States and 1000

outside America. It is stated to be the world's number one retailer with stores

in the United States, Canada, Puerto Rico, Mexico, Brazil, Argentina, China,

the United Kingdom, Indonesia, Germany and Korea.

The Complainant makes extensive

use of the mark. The Complainant uses its WAL-MART mark on and in its

discount retail stores, grocery stores, membership warehouse clubs, pharmacies,

deep discount warehouse outlets, advertising throughout the world, websites,

scholarship programs, telethons for children's hospitals, industrial development

grants, environmental programs and a variety of community support programs.

The Internet is a significant vehicle for the Complainant. It has websites located

at, among other Internet addresses, <walmart.com>, <wal-mart.com>

and <walmartstores.com>. These websites are an important part of the Complainants'

corporate on-line identity and brand.

- The Respondent

According to the Better-Whois.com

database, the Respondent's domain name <ewalmart.com> was registered on

March 17, 2000, (Annex A to the Complaint). The site appears to be inactive.

5. Parties' Contentions

A. Complainant

The Complainant contends

that the Respondent’s domain name <ewalmart.com> is confusingly similar

to the trademark or service mark WAL-MART in which the Complainant has

rights. Reliance is placed on the similarity of the marks in their entireties

as to appearance, sound, connotation and commercial impression. It is asserted

that the second level domain name "ewalmart" is a combination of two words,

"walmart" and "e". The first word "walmart" is said to be virtually identical

in appearance and sound to the Complainant's mark WAL-MART. The Respondent

has merely added the letter "e" before the mark.

Further, the Complainant

states that the domain name is confusingly similar to the Complainant's WAL-MART

mark because the mark is famous throughout the world. As such, the Complainant

asserts that buyers would be likely to think that any site connected with the

domain name originates from the Complainant. The Complainant states that the

Respondent's domain name is likely to confuse customers and cause them to believe

mistakenly that the domain name is associated with the Complainant's stores

and, specifically, the Complainant's electronic shopping services provided through

its on-line store. It notes that the letter "e", when added as a prefix to another

word (such as in "e-mail"), denotes an electronic or on-line presence, typically

through the offer of goods or services. The Complainant did not authorise the

Respondent's use of any domain name.

Further, the Complainant

contends that the Respondent has no rights or legitimate interests in respect

of the domain name. Reliance is placed, first, on the fact that the Respondent

is not currently using the domain name in connection with any on-going business.

A search of websites found that the domain name is currently not being used

by the Respondent (see Annex E to the Complaint). In addition, the Complainant

has searched for and not found any evidence that the Respondent holds trademark

rights to the mark "ewalmart" anywhere in the world.

The Complainant also contends

that the domain name was registered in bad faith. It asserts on information

and belief, that the Respondent registered the domain name with knowledge of

the Complainant's rights in its mark. It also asserts that the Respondent has

constructive notice of the Complainant's trademark rights by virtue of its registrations

in the United States and Korea as well as in many other countries and the use

of the trademark registration symbol when referencing the mark in print advertising

and on websites. As such, it is asserted that the Respondent logically also

had notice of the Complainant's registration for the domain name by reason of

the availability of easy to use WHOIS directories and the fact that a business

registrant would, at least, initially, seek registration of the .com version

of a proposed domain name.

Further, the Complainant

notes that the Respondent is not using the domain name with any on-going legitimate

business. Its only action to date has been to passively hold the domain name

since registration on March 16, 2000.

The Complainant also states

that the Respondent has provided false contact information in registering the

domain name. A search of Ireland's directories for "G.W." and "Mm Mmmm" suggests

that these are false names. Further, the e-mail address of the administrative

contact is not a working e-mail address. An e-mail sent to that address was

returned as a failed delivery (see Annex F to the Complaint).

The Complainant contends

that WIPO has recognised that the passive holding of a domain name that is confusingly

similar to the mark of a complainant and the provision of false contact information

may constitute "bad faith" under paragraph 4(b) of the Policy. Reference is

made to the decisions in Hamburger Hamlets, Inc. v.Hallee Wachsmuth,

WIPO Case No. D2000–1548 (citing Chernow Communications v. Jonathan D. Kimball,

WIPO Case No. D2000-0119 and Mondich and American Wine Biscuits, Inc. v.

Brown, WIPO Case No. D2000-0004.)

B. The Respondent

There is no evidence from

the Respondent.

6. Discussion and Findings

Melbourne IT has confirmed

that the Policy applies to the domain name. Paragraph 4(a) of the Policy requires

the Complainant to make out three elements:

A. The "domain

name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights"

The domain name in issue

is <ewalmart.com>. The Complainant is the owner of the trademark WAL-MART.

The Complainant has used the mark in connection with retail services as early

as July 1, 1962. The Complainant also provides electronic shopping services

through its on-line store under the WAL-MART mark. The Complainant also

has websites at the addresses indicated above.

In these circumstances,

the Panelist finds that the domain name <ewalmart.com> is "confusingly

similar" to a trademark in which the Complainant has rights.

B. The Respondent "has

no rights or legitimate interests in respect of the domain name"

There is no evidence that

the Respondent has rights or legitimate interests in respect of the domain name.

If the Panelist finds any

of the matters set out in Paragraph 4(c) of the Policy to be proved, based on

the evaluation of all the evidence, that is said to demonstrate the Respondent's

rights or legitimate interests to the domain name. There is no evidence of any

use of, or demonstrable preparations to use, the domain name or a name corresponding

to the domain name in connection with a bona fide offering of goods or services

in terms of Paragraph 4(c)(i) of the Policy. Further, there is no evidence that

the Respondent has been commonly known by the domain name, even if it acquired

no trade mark or service mark rights in terms of Paragraph 4(c)(ii) of the Policy.

Lastly, there is no evidence that the Respondent is making a legitimate non

commercial fair use of the domain name, without intent for commercial gain to

misleadingly divert consumers or tarnish the trade mark or service mark at issue

in terms of Paragraph 4(c)(iii) of the Policy.

There is no other evidence

on which the Panelist can rely suggesting that the Respondent has rights or

legitimate interests in respect of the domain name.

In these circumstances,

the Panelist finds that the Respondent has no rights or legitimate interests

in respect of the Complainant's registered trademark.

C. The "domain

name has been registered and is being used in bad faith"

If the Panelist finds evidence

of any of the matters set out in Paragraph 4(b) of the Policy that shall be

evidence of registration and use of a domain name in bad faith.

The matters set out in

Paragraph 4(b) are as follows:

(i) Circumstances indicating

that the Respondent has registered or has acquired the domain name for the purpose

of selling, renting or otherwise transferring the domain name registration to

the Complainant who is the owner of the trademark or to a competitor of that

Complainant for valuable consideration in excess of the Respondent's documented

out-of-pocket costs directly related to the domain name. There is no evidence

of any communication between the Respondent and the Complainant about the domain

name.

(ii) The Respondent

has registered the domain name in order to prevent the owner of the trademark

from reflecting the mark in a corresponding domain name, provided that the Complainant

has engaged in a pattern of such conduct. There is no evidence on this point.

(iii) The Respondent

has registered the domain name primarily for the purpose of disrupting the business

of a competitor. Again, there is no evidence on this point.

(iv) By using the domain

name, the Respondent has intentionally attempted to attract for commercial gain,

Internet users to the Respondent's web site or other on-line location, by creating

a likelihood of confusion with the Complainant's mark as to source, sponsorship,

affiliation, or endorsement of the Respondent's web site or location, or of

a product or service on the Respondent's web site or location. Again, there

is no evidence on this point.

There is no positive evidence

of any of these matters. The examples in Paragraph 4(b) however, are intended

to be illustrative, rather than exclusive: see Telstra Corporation Limited

v Nuclear Marshmallows, WIPO Case No. D2000-0003. In that case, it was established

that "inaction" could constitute bad faith use with reliance on the following

factors:

- the respondent was

in breach of the relevant Australian business names legislation by virtue of

its failure to register its trading name.

- the respondent had

provided false address information for the purposes of its domain name registration

in breach of its warranty under paragraph 2(a) of the Policy.

- the complainant's

trademark is one of the best known trademarks in Australia and it was inconceivable

that the person or persons behind the respondent would not be aware of this

fact.

- by virtue of the widespread

use and reputation of the trademark in issue members of the public in Australia

would believe that the entity owning the domain name which included that trademark

was the complainant or in some way associated with the complainant.

- any realistic use

of the domain name must misrepresent an association with the complainant and

its goodwill resulting in passing off, breaches of Australian consumer protection

legislation and trademark infringement.

Here, all but the first

element is present. Its seems highly likely that the respondent has provided

false address information. Further, the trademark WAL-MART is extremely

well-known and it is very unlikely that the person or persons behind the Respondent

would not be aware of this fact. In these circumstances, the Panelist accepts

that there is likelihood that consumers would believe that the entity owning

the domain name was the Complainant or in some way associated with the Complainant.

Lastly, any realistic use of the domain name is likely to misrepresent an association

with the Complainant and, as such, to be liable to constitute passing off. As

such, the Panelist finds that the domain name has been registered and is being

used in bad faith.

7. Decision

In accordance with the

finding that the domain name is confusingly similar to a trademark or service

mark in which the Complainant has rights, that the Respondent has no rights

or legitimate interests in respect of the domain name and that the domain name

has been registered and is being used in bad faith, the Panelist orders that

the domain name <ewalmart.com> be transferred to the Complainant.

Mary Padbury

Sole Panelist

Dated: June

29, 2001

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