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Wal-Mart Stores, Inc. v. Peter Carrington

WIPO Case No. D2002-0846

Outcome
Transfer
Domain names
walmartcreditcards.com
Complainant
Wal-Mart Stores, Inc.
Respondent
Peter Carrington
Panelist
Ian Donovan
Registrar
Key-Systems GmbH ("the Registrar") of SaarPfalz-Park – Building 7, Bexbach 66450, Germany
Decided
31 Oct 2002
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/2002/d2002-0846.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Peter Carrington

Case No. D2002-0846

1. The Parties

1.1 The Complainant is Wal-Mart Stores, Inc., a United Sates corporation with

its headquarters in Bentonville, Arkansas, United States of America.

1.2 The Respondent is Peter Carrington, of Party Night Inc., Jan Luykenstraat

58, Amsterdam 1071 CS, Netherlands.

2. The Domain Name and Registrar

2.1 The proceeding is concerned with the domain name <walmartcreditcards.com>

("the disputed Domain Name").

2.2 The disputed Domain Name is registered with Key-Systems GmbH ("the Registrar")

of SaarPfalz-Park – Building 7, Bexbach 66450, Germany.

3. Procedural History

3.1 The Complainant initiated this proceeding by filing a Complaint (‘the Complaint"),

electronic and hard copies of which were received by the World Intellectual

Property Organization Arbitration and Mediation Center ("the Center")

on September 9 and 12, 2002, respectively. The Complaint

was also sent to the Registrar and to the addresses of the Respondent shown

in the Registrar’s Whois database.

3.2 On September 13, 2002, the Center notified the Complainant of a deficiency

in paragraph 19 of the Complaint, containing the Complainant’s submission to

the jurisdiction of certain court in respect of any challenge that may be made

to the decision by an Administrative Panel in this proceeding. In response to

this notification, the Complainant filed an amendment to paragraph 19 of the

Complaint on September 16, 2002. Copies of this amendment were also

sent to the Respondent and the Registrar.

3.3 On September 17, 2002, the Center completed its review to confirm

that the Complaint complies with the formal requirements of the ICANN Uniform

Domain Name Dispute Resolution Policy ("the ICANN Policy"), the Rules

for Uniform Domain Name Dispute Resolution Policy ("the ICANN Rules")

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

On the same date, the Center transmitted electronic and hard copies of the Complaint

and notification of the commencement of this proceeding to the email and physical

addresses of the Respondent shown in the Registrar’s Whois database.

3.4 No response was received from the Respondent and on October 8, 2002,

the Center transmitted an electronic notification of default to the Respondent.

3.5 The Complainant elected to have the Complaint resolved by a single-member

Panel. The Center invited Ian Donovan to serve as the single-member Panel and

a Statement of Acceptance and Declaration of Impartiality and Independence was

duly executed and faxed to the Center. On October 17, 2002, the Complainant

and Respondent were notified of the appointment of the Panel and the requirement

that the Panel forwards its decision to the Center by October 31, 2002.

3.6 The Panel has not received any requests for waivers or extensions of deadlines

and the Panel has not found it necessary to request any further information

from the parties.

3.7 The language of this proceeding is English, being the language of the registration

agreement applicable to the disputed Domain Name.

4. Factual Background

4.1 The Complainant operates more than 2700 retail outlets in the United States

and more than 1100 outlets in various other countries in Europe, Asia and South America.

It has made continuous use of the WAL-MART service mark since 1962, and

currently owns registrations of that mark in 46 countries. These include a registration

in 1994, for the Benelux countries and registration in 1999, for Germany.

The Complainant makes extensive use of the service mark in connection with its

many retail outlets, in advertising its merchandise and services throughout

the world, on its various websites and in a variety of community service programs.

The Complainant offers Wal-Mart credit card and claims trademark rights in the

marks WAL-MART and WAL-MART CREDIT CARD for credit cards and related services.

It also operates a website at <walmartcreditcard.com> providing information

and services to its customers.

4.2 The Complainant has not authorised the use of the disputed Domain Name

by the Respondent.

4.3 On August 23, 2002, the Complainant sent a letter by courier and by email

to the Respondent, demanding transfer of the disputed Domain Name and immediate

removal of certain links. No reply to that letter was received and there were

no changes to the links. The relevant Internet service provider and the Registrar

agreed subsequently to shut down an offending link pending the finalisation

of this proceeding.

5. Parties Contentions

5.1 The Complainant has submitted that:

i. the disputed Domain Name is very similar to and likely to be confused with

the Complainant’s WAL-MART and WAL-MART CREDIT CARD service marks and its own

website at <walmartcreditcard.com>.

ii.it has rights in these service marks which predate the registration by the Respondent of the disputed Domain Name.

iii. the widespread use of the WAL-MART service mark in the Complainant’s operations

in many countries, in its extensive advertising and on its websites has made

the mark famous which in turn means that consumers are likely to believe that

any domain name incorporating the WAL-MART mark, or a close approximation of

it, is associated with the Complainant.

iv. the Respondent does not have legitimate rights to the disputed Domain Name.

v. the disputed Domain Name is being used, for commercial gain, to misleadingly

divert the Complainant’s customers to a website with links to inappropriate

sites offering pornography and annoying pop-up advertisements, which tarnishes

the Complainant’s image.

vi. the Respondent’s use of the disputed Domain Name disrupts the Complainant’s

business by preventing it from using the domain name for its own business.

vii. the Respondent had constructive notice of the Complainant’s rights in

the marks as a result of the various trademark registrations owned by the Complainant

in the Netherlands, Germany, the United States and other countries and the use

of the marks in print advertising and on the Complainant’s websites.

viii.the Respondent’s failure to provide accurate contact information or to respond to correspondence related to this proceeding is further evidence of bad faith.

5.2 The Respondent has not filed a response to the Complaint.

6. Discussion and Findings

6.1 Paragraph 2(a) of the ICANN Rules requires the Center to employ reasonably

available means calculated to achieve actual notice of a complaint to the Respondent

and stipulates how this responsibility should be discharged. The Panel is satisfied

on the evidence before it that the Center has duly discharged its responsibilities

in terms of this paragraph.

6.2 Paragraph 5(e) of the ICANN Rules provides that if a Respondent does not

submit a response to a Complaint, in the absence of exceptional circumstances,

the Panel shall decide the dispute based on the Complaint. The Panel finds that

no such exceptional circumstances exist in this proceeding.

6.3 In terms of paragraph 4(a) of the ICANN Policy, the Complainant must prove

that:

(i) the disputed Domain Name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the

disputed Domain Name; and

(iii) the disputed Domain Name has been registered and is being used in bad

faith.

6.4 The view of the Panel is that persons coming across the website of <walmartcreditcards.com>

might well conclude that it is owned by or associated with the Complainant as

the owner of the famous WAL-MART mark. This likelihood is enhanced by the fact

that the Complainant does offer a WAL-MART credit card, utilises WAL-MART CREDIT

CARD as a service mark and has a virtually identical website of its own. The

Complainant’s continuous use of the mark for many years and its registration

in many countries clearly establishes the Complainant’s right to the mark. Accordingly,

the Panel finds that the domain name <walmartcreditcards.com> registered

by the Respondent is confusingly similar to service marks in which the Complainant

has rights.

6.5 The Complainant asserts that the Respondent has no rights to any mark consisting

of the term "WAL-MART" in any country. In the absence of evidence

from the Respondent to counter this, the Panel finds that the Respondent has

no rights or legitimate interest in respect of the disputed Domain Name.

6.6 The fame of the WAL-MART mark and the existing registrations of the mark

in numerous countries, including the Netherlands and Germany, strongly suggest

that the Respondent was or should have been aware of the mark prior to registering

the disputed Domain Name. The Respondent’s use of a contact address at which

he is not known for the purposes of the registration agreement in respect of

the disputed Domain Name supports the conclusion that the registration was in

bad faith. The subsequent use of a domain name incorporating the Complainant’s

famous marks to link to other sites has the appearance of a deliberate attempt

to lead persons to believe that those sites are in some way associated with

the Complainant. Given the dubious content on those sites, such a belief might

well tarnish the Complainant’s image in their eyes. Accordingly, the Panel finds

that the disputed Domain Name was registered and is being used in bad faith.

7. Decision

7.1The decision of the Panel is that the domain name <walmartcreditcards.com> is confusingly similar to the WAL-MART and WAL-MART CREDIT CARD service names 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 was registered and is being used in bad faith.

7.2In terms of paragraph 4(i) of the ICANN Policy, the Panel requires that the registration of the domain name <walmartcreditcards.com> be transferred to the Complainant.

Ian Donovan

Sole Panelist

Dated: October 31, 2002

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