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Wal-Mart Stores, Inc. v. Michael Horton

WIPO Case No. D2003-0631

Outcome
Transfer
Domain names
shopwal-mart.com
Complainant
Wal-Mart Stores, Inc. (United States of America)
Complainant's counsel
Venable, Baetjer, Howard & Civiletti, LLP
Respondent
Michael Horton (United States of America)
Panelist
Andrew Mansfield
Registrar
1stDomain.Net a division of G+D International LLC.
Decided
14 Oct 2003
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/2003/d2003-0631.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wal-Mart Stores, Inc. v. Michael Horton

Case No. D2003-0631

1. The Parties

The Complainant is Wal-Mart Stores, Inc. of Bentonville, Arkansas, United States of America, represented by Venable, Baetjer, Howard & Civiletti, LLP, United States of America.

The Respondent is Michael Horton, Boogy Pop Communications of Altus, Oklahoma, United States of America.

2. The Domain Name and Registrar

The disputed domain name <shopwal-mart.com> is registered with 1stDomain.Net a division of G+D International LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on August 13, 2003. On August 14, 2003, the Center transmitted

by e-mail to 1stDomain.Net a division of G+D International LLC a request for

registrar verification in connection with the domain name at issue. On August 25, 2003,

1stDomain.Net a division of G+D International LLC transmitted by e-mail 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 August 26, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response

was September 15, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on September 17, 2003.

The Center appointed Andrew Mansfield as the sole panelist in this matter on

October 13, 2003. 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

This complaint is based on Complainant’s service mark, WAL-MART, and trade

name WAL-MART. Wal-Mart’s WAL-MART service mark was registered on July 20, 1993

in the United States, Registration Number 1,783,039.

Respondent registered the domain name on June 23, 2003. On June 26, 2003,

Respondent sent an e-mail to Complainant stating that the domain name would

be auctioned to the highest bidder.

5. Parties’ Contentions

A. Complainant

Complainant is the world’s largest retailer. Complainant owns the famous service

mark WAL-MART for retail services in a large number of countries including the

United States -- Registration Number 1,783,039, registered July 20, 1993,

for the mark WAL-MART for use in retail department store services (U.S. 101).

Complainant asserts that the domain name should be transferred to Complainant

because the domain name is confusingly similar to its WAL-MART mark. Complainant

also asserts that Respondent has no rights or legitimate interests in the domain

name, and the domain name was registered and is being used in bad faith. To

support its claim of bad faith registration and use, Complainant points to the

rapidity with which Respondent registered the domain name and then affirmatively

notified Complainant that the domain name was for sale by auction.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Complainant must establish all of the elements required for obtaining the requested

domain name transfer under Paragraph 4(a) of the Policy. Those elements

are:

(a) The Domain Name registered by Respondent is identical or confusingly similar

to a trademark or service mark in which Complainant has rights; and

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

Domain Name; and

(c) The Domain Name has been registered and is being used in bad faith.

Each of these elements will be examined below.

A. Identical or Confusingly Similar

The domain name is not identical to the mark WAL-MART. Complainant need not,

however, demonstrate that the domain name is identical to one of its trademarks.

The domain name need only be confusingly similar to a mark held by Complainant.

Two lines of authority provide support for the finding by this Panel that the

domain name is confusingly similar to WAL-MART.

First, it is well-established by previous UDRP Panel decisions that a domain

name incorporating a distinctive trademark in its entirety creates sufficient

similarity between the mark and the domain name as to render it confusingly

similar (See, e.g., Minnesota Mining & Manufacturing v. JonLR, WIPO

Case No. D2001-0428, <3mcare.com> and Microsoft Corporation v.

S.L., Mediaweb, WIPO Case No. D2003-0538,

<msnporno.com>). Complainant also properly points out that the word "shop"

is closely associated with what occurs at Complainant’s stores, making the confusion

more acute.

Second, prior Panels have addressed the issue of the combination of a generic

term with a distinctive trademark, as occurred here. The determinative factor

in such cases is an analysis of whether an average Internet user might expect

the holder of the distinctive mark to offer the goods suggested by the generic

term. See, e.g., Microsoft Corporation v Momm Amed Ia, WIPO

Case No. D2001-1454, <msnmember.com>, or Sony Kabushiki Kaisha

(also trading as Sony Corporation) v. Inja, Kil, WIPO

Case No. D2000-1409. Other Panels have even addressed the addition of a

generic word to the WAL-MART mark. See, e.g., Wal-Mart Stores, Inc. v. Brad

Tauer, WIPO Case No. D2000-1076; Wal-Mart

Stores, Inc. v. Kenneth E. Crews, WIPO

Case No. D2000-0580.

The domain name is held by the Panel to be confusingly similar to the trademarks

of the Complainant. The Complainant has thus met the burden of proof as established

by subparagraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in

the domain name. Respondent provided no response. The Panel finds that Respondent

has no such rights or legitimate interests.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the ICANN Policy provides the following non-exclusive

examples of registration and use in bad faith:

"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 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 website 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 website or location

or of a product or service on your website or location."

The Panel finds that the Respondent’s conduct indicates that Respondent acquired

the domain name primarily for the purpose of selling it to Complainant for more

than its out-of-pocket costs. Respondent registered the domain name and then,

three days later, offered to sell it to the highest bidder. In addition, by

the transmission of an e-mail to Complainant, Respondent ensured that Complainant

knew the domain name was to be placed for sale by auction. Other Panels have

found such conduct to indicate bad faith registration and use.

"Registering a domain name with the intent to sell it to the rightful

trademark owner has previously been recognized by a WIPO Administrative Panel

as evidence of bad faith registration and use under the Policy." Burlington

Coat Factory Warehouse Corporation v. Naiyer Imam, WIPO

Case No. D2000-0485 (citing World Wrestling Federation Entertainment,

Inc. v. Michael Bosman, WIPO Case No. D99-0001).

In addition, Respondent apparently provided false contact information to the

Registrar in the registration of the domain name. Such conduct is further evidence

of Respondent’s bad faith. Numerous Panels have found false or misleading registration

information to be such an indicator. See, e.g., Action Instruments, Inc v.

Technology Associates, WIPO Case No. D2003-0024;

Royal Bank of Scotland Group v. Stealth Commerce, WIPO

Case No. D2002-0155; Home Director, Inc. v. HomeDirector, WIPO

Case No. D2000-0111; and Chanel v. 1, WIPO

Case No. D2003-0218.

Complainant has met its burden of proving that Respondent registered and used

the 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 be transferred

to the Complainant.

Andrew Mansfield

Sole Panelist

Dated: October 14, 2003

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