Wal-Mart Stores, Inc. v. Hosting

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Wal-Mart Stores, Inc. v. Hosting

Case No. D2005-0793

1. The Parties

The Complainant is Wal-Mart Stores, Inc., Arkansas , United States of America, , represented by Kirkpatrick & Lockhart Nicholson Graham LLP, United States of America.

The Respondent is Hosting, Bally, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <walmartexposed.com> is registered with Dotster,

Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2005. On July 29, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On July 29, 2005, Dotster, Inc. transmitted by email 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 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2005.

The Center appointed William R. Towns as the sole

panelist in this matter on September 12, 2005. 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

The Complainant is a large and well known retailer. The Complainant operates Wal-Mart Stores and Supercenters in the United States of America and elsewhere. The Complainant has registered the service mark WAL-MART for retail services and makes extensive use of the mark, which is well known. The Complainant also operates websites at various locations including “www.walmart.com”, “www.wal-mart.com”, and “www.walmartstores.com.”, which provide information about Wal-Mart stores and allow consumers to shop online.

The Respondent is the registrant of the disputed domain

name <walmartexposed.com>. The disputed domain name resolves to the Respondent’s

website “www.walmartexposed.com”, an adult-oriented website containing

sexually explicit content and links to commercial pornographic sites, including

a link to the Respondent’s “WALMARTEXPOSED PPV Video Store”

where various adult-oriented, pornographic videos can be downloaded or viewed

on a pay-per-minute basis. The Respondent’s web page also purportedly

depicts individuals performing sexual acts in Wal-Mart stores and parking lots.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the registered WAL-MART mark in which the Complainant has rights.1 According to the Complainant, the Respondent is using the confusingly similar domain name to redirect Internet users to its website, where the Respondent displays and sells adult-oriented, pornographic, and sexually explicit material, and display links to various commercial websites that display and sell adult-oriented, pornographic, and sexually explicit material.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, but rather is seeking to capitalize on the confusing similarity of the disputed domain name with the Complainant’s mark in order to attract internet users to its website. The Complainant asserts that the Respondent’s use of the disputed domain name “to market pornographic services which are not provided by the Complainant” is evidence of bad faith registration and use, and requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. Milwaukee Electric Tool Corporation v.

Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO

Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited

to providing a remedy in cases of “the abusive registration of domain

names”, also known as “cybersquatting”. Weber-Stephen Products

Co. v. Armitage Hardware, WIPO Case No. D2000-0187.

See Report of the WIPO Internet Domain Name Process, paragraphs 169 & 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint

on the basis of statements and documents submitted and in accordance with the

Policy, the Rules and any other rules or principles of law that the Panel deems

applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a respondent may

establish rights or legitimate interests in the domain name. Although the complainant

bears the ultimate burden of establishing all three elements of paragraph 4(a),

a number of panels have concluded that paragraph 4(c) shifts the burden to the

Respondent to come forward with evidence of a right or legitimate interest in

the domain name, once the complainant has made a prima facie showing.

See, e.g., Document Technologies, Inc. v. International Electronic Communications

Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain name

<walmartexposed.com> is confusingly similar to Complainant’s WAL-MART

mark for purposes of paragraph 4(a)(i) of the Policy. The Complainant beyond

question has established rights in the WAL-MART mark through registration and

use. At a bare minimum, the mark is entitled to a presumption of validity by

virtue of registration with the United States Patent and Trademark Office. See

EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,

WIPO Case No. D2000-0047.

The disputed domain name <walmartexposed.com>, incorporates the Complainant’s

WAL-MART mark in its entirety. The critical inquiry under the first element

of paragraph 4(a) is simply whether the mark and domain name, when directly

compared, have confusing similarity. The Panel finds that to be the case here.

See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO

Case No. D2000-0662 (domain name incorporating mark in its entirety is confusingly

similar). Accordingly, the Panel finds that the Complainant has met its burden

under paragraph 4(a)(i).

C. Rights or Legitimate Interests

The Complainant clearly has not authorized the Respondent to use the WAL-MART mark or to incorporate its well known mark in a domain name. Nothing in the record reflects that the Respondent has ever been commonly known by the disputed domain name. Nevertheless, the Respondent is using the domain name, which is confusingly similar to the Complainant’s distinctive mark, to divert Internet traffic to the Respondent’s adult-oriented website, where pictures purportedly depicting individuals engaged in sexual acts in Wal-Mart stores are displayed.

Prior panel decisions such as Auto-C, LLC v. MustNeed.com, WIPO

Case No. D2004-0025, have deemed such a showing sufficient to shift the

burden to the respondent to come forward with evidence of rights or legitimate

interests in the disputed domain name. Accordingly, the Panel in this case is

persuaded that a prima facie showing has been made for purposes of paragraph 4(a)(ii)

that the Respondent lacks rights or legitimate interests in the disputed domain

name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO

Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks

rights to the domain name at issue, the respondent must come forward with proof

that it has some legitimate interest in the domain name to rebut this presumption.

Document Technologies, Inc. v. International Electronic Communications Inc.,

WIPO Case No. D2000-0270. Pursuant to

paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate

interests in the disputed domain names by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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; or

(ii) the Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In this case, the Respondent has not submitted any response to the Complaint.

Some panels have held that a respondent’s lack of response can be construed

as an admission that the respondent has no rights or legitimate interests in

a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO

Case No. D2000-0624. Other panel decisions note that adverse inferences

may be drawn from a respondent’s failure to reply. See Charles Jourdan

Holding AG v. AAIM, WIPO Case No. D2000-0403.

Certainly, in the absence of any submission by the Respondent, this Panel may

accept all reasonable inferences and allegations included in the Complaint as

true. See Talk City, Inc. v. Robertson, WIPO

Case No. D2000-0009.

There is nothing in the record remotely suggesting that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making any legitimate noncommercial or fair use of the domain name. Instead the record reflects the Respondent’s use of the disputed domain name to capitalize on the Complainant’s distinctive mark by diverting internet users to a website where the Respondent operates an adult-oriented website containing sexually explicit conduct, from which the Respondent offers for sale sexually explicit and arguably pornographic material.

In view of the foregoing, the Panel cannot avoid the conclusion that the Respondent

is using the disputed domain name in connection with an offering of goods or

services. Nevertheless, this showing without more does not demonstrate that

the Respondent has rights or legitimate interests in the disputed domain name

for purposes of paragraph 4(c)(i). It is well settled that there can be no bona

fide offering of goods or services under the Policy where the disputed domain

name has been registered and is being used in bad faith. See, e.g., First

American Funds, Inc. v. Ult. Search, Inc, WIPO

Case No. D2000-1840. The Panel concludes for the reasons discussed below

that the Respondent registered and is using the disputed domain name in bad

faith.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.

The overriding objective of the Policy is to prevent abusive domain name registration

and use for the benefit of legitimate trademark owners, and the Panel notes

that the examples of bad faith registration and use set forth in paragraph 4(b)

are not meant to be exhaustive of all circumstances from which such bad faith

may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,

WIPO Case No. D2000-0003.

In this case, the totality of circumstances demonstrates the Respondent’s

bad faith registration and use of the disputed domain name within the meaning

of paragraph 4(a)(iii). The Panel finds that the Respondent registered and is

intentionally using the disputed domain name – which is confusingly similar

to the Complainant’s well known mark – for commercial gain, to divert

internet users to its sexually oriented website. There can be no question in

the circumstances of this case, and particularly given the nature of the Respondent’s

use of the Complainant’s name and well known WAL-MART mark on its website,

that the Respondent deliberately chose the domain name in order to capitalize

on the trademark or service mark value inherent in the WAL-MART name. As noted

in Research In Motion Limited v. Dustin Picov, WIPO

Case No. D2001-0492, when a domain name is so obviously connected with a

Complainant and its mark or products, its very use by a registrant with no connection

to the Complainant suggests “opportunistic bad faith”.

Accordingly, the Panel finds that the Complainant has met its burden under

paragraph 4(a)iii) of the Policy to demonstrate that the domain name has been

registered and is being used 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 <walmartexposed.com> be transferred to the Complainant.

William R. Towns

Sole Panelist

Dated: September 20, 2005

1 The Complainant initially

registered the WAL-MART mark with the United States Patent and Trademark Office

(“USPTO”) on July 20, 1993, based on use of the mark since July 1, 1962.

A second registration for the mark was obtained on October 5, 2004, based on the

Complainant’s use of the mark as early as March 1992.

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