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Wal-Mart Stores, Inc. v. Kuchora, Kal
Case No. D2006-0033
1. The Parties
The Complainant is Wal-Mart Stores, Inc., Arizona, United States of America, represented by Welsh & Katz, Ltd, United States of America.
The Respondent is Kuchora, Kal, Rawalpindi, Pakistan.
2. The Domain Names and Registrar
The disputed domain names <wallmartpharmacy.com>, <wal-martpharmacy.com>,
and <walmart-pharmacy.com> are all registered with Intercosmos Media Group
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2006. On January 12, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On January 12, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response. 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 January 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2006.
The Center appointed Keita Sato as the sole panelist
in this matter on February 24, 2006. 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,
4. Factual Background
The Complainant has registered several US federal trademarks:
- “WAL-MART” for retail department store services, Registration No.1,783,039 issued July 20, 1993.
- “WAL-MART FOR ALL YOUR NEEDS” for providing health information, Registration No. 2,875,241 issued, August 17, 2004;
- “WAL-MART NEIGHBORHOOD MARKET” for supermarket services and retail pharmacy services, film developing services, and carry-out services featuring prepared food, Registration No. 2,870,960, issued August 10, 2004
The Respondent registered the Domain Names at issue on September 12, 2003, through Intercosmos Media Group d/b/a directNIC.com. After the Complainant became aware of the registration of the Domain Names at issue, a cease and desist letter was sent by the Complainant via certified mail through its authorized representative on August 31, 2005, requesting the Respondent to transfer the disputed Domain Names to the Complainant. A copy of the cease and desist letter was attached to the Complaint [Annex H]. However, this letter was returned on September 29, 2005 with the statement that the PO Box had been not renewed. Then, the Complainant sent a copy of this letter via e-mail to the Respondent on September 29, 2005. Despite the Complainant’s attempts to contact the Respondent, the Respondent did not reply.
As a result, and considering the registration by the
Respondent of the three disputed Domain Names including the WAL-MART mark, the
Complainant decided to submit the Complaint to the Center.
5. Parties’ Contentions
The Complainant objects to the registration of the Domain Names at issue by the Respondent, because the Respondent’s activities fall within the conditions of paragraph 4(a). Firstly, the Domain Names are likely to be confused with the Complainant’s mark, “WAL-MART”. The Complainant alleges that there is a clear similarity between the Domain Names at issue and the Complainant’s mark, since the Respondent simply adds the word “pharmacy” to variations of the Complainant’s “WAL-MART” mark. The Complainant alleges that it is well-settled that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to such trademark. Moreover, the additional terms in a domain name should not affect a finding that the domain name is identical or confusingly similar. Secondly, the Respondent has no rights or legitimate interests with respect to the Domain Names at issue. In the Complaint, the Complainant contends that the Respondent has no rights to any trademark consisting of the term WALMART in any country, and does not commercially use the term WALMART in the course of trade or in connection with a bona fide offering of goods and services, but does use the term WALMART for commercial gain. The Complainant argues that the Respondent is not commonly known by the Domain Names at issue. Thirdly, the Respondent registered and used the Domain Names at issue in bad faith, since the Respondent had constructive notice of the Complainant’s trademark rights by virtue of (a) the Complainant’s various service mark registrations in the United States and (b) the Complainant’s use of a trademark registration symbol when referencing the mark on its website at “www.walmart.com” and in other media. Further, the Respondent is using the Domain Names at issue to display links to various online pharmacies, and so assumably, receives compensation from several sponsored links.
Because of these reasons, the Complainant requested the transfer of the Domain Names at issue
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
For a complaint to succeed, the Panel must, under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, be satisfied:
i) that 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) 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.
A. Identical or Confusingly Similar
The Panel finds that the Domain Names at issue are confusingly similar to a trademark in which the Complainant has rights. As stated above, the Complainant has registered trademark rights in WAL-MART in the U.S.A.
A prior panel has held that, if a domain name incorporates a complainant’s
mark in its entirety, it is confusingly similar to that mark despite the addition
of other words. It is well-established that the addition of a generic term to
a trademark does not necessarily eliminate a likelihood of confusion. Indeed,
there are numerous examples of decisions holding a domain name to be confusingly
similar to a registered trademark when it consists of the mark plus one or more
generic terms. See Minnesota Mining and Manufacturing Company v. Mark Overbey,
WIPO Case No. D2001-0727. See also Hang
Seng Bank Limited v. Websen Inc., WIPO
Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>);
Oki Data Americas, Inc. v. ASD, Inc., WIPO
Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>);
Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO
Case No. D2000-0662 (first element of Policy is satisfied where domain name
wholly incorporates complainant’s mark). In this context, the Domain Name
<wal-martpharmacy.com> is confusingly similar to the Complainant’s
trademark, since the Domain Name <wal-martpharmacy.com> incorporates the
entire trademark “WAL-MART” and the generic term “pharmacy”.
In addition, the Complainant uses the Domain Name <walmart.com>“
for its official web page “WAL*MART” mark appearing on its main
page. The Domain Name <walmart-pharmacy.com> is also confusingly similar
to the Complainant’s mark “WAL-MART”, since the well-established
notion held by previous UDRP panel could likewise be applied. Lastly, the Domain
Name <wallmart-pharmacy.com> is also confusingly similar to the “WAL-MART”
mark. The differences between “WAL-MART” and “wallmart”
is only the addition of an “l”, and the deletion of the hyphen makes
no difference in terms of pronunciation. The Panel finds that <wallmart-phamarcy.com>
should also fall into the well-established principle above-mentioned.
Accordingly, the Panel finds that the Domain Names at Issue registered by the Respondent are confusingly similar to the Complainant’s WAL-MART mark.
B. Rights or Legitimate Interests
As stated above, the Complainant registered its trademark “WAL-MART” with the United States Patent and Trademark Office. Thus, the WAL-MART mark is presumed valid. However, the Respondent’s use of the WAL-MART mark has no reasonable explanation. The name of the Respondent has no relation with the word “WAL-MART” or “WALLMART”. In addition, none of the elements shown in paragraph 4(c) of the Policy has been proven by the Respondent. Paragraph 4(c) states:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.”
The Panel thus concludes that the Respondent has no rights or legitimate interests with the Domain Names at issue.
C. Registered and Used in Bad Faith
The web pages of the Respondent under the disputed Domain Names provide a number of links, including to on-line pharmacies. The Respondent appears to have been aware of the Complainant and its trademark as can be assessed from the web pages of the Respondent under the Domain Names at issue. The Panel therefore finds that the Domain Names at issue were registered in bad faith.
The web pages operated by the Respondent include various links relating to
pharmacy, travel, entertainment, and financial information. The Panel could
not find any reasonable explanation for the Respondent’s use of the Complainant’s
mark “WAL-MART”. Moreover, the deceptive nature of the entire modus
operandi of a registrant supplying false information to hide its identity
is itself evidence of bad faith. See Chung, Mong Koo and Hyundai Motor Company
v. Individual, WIPO Case No. D2005-1068,
which cited Telstra Corporation v. Nuclear Marshmallows, WIPO
Case No. D2000-0003. Actually, the Complainant has proven that the PO Box,
which is shown as the mailing address of the Respondent in the WHOis information,
had not been renewed.
Accordingly, the Panel concludes that the third element of the Paragraph 4
(a) has also been made out.
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 names, <wallmartpharmacy.com>, <wal-martpharmacy.com>, and <walmart-pharmacy.com> be transferred to the Complainant.
Dated: March 10, 2006