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and Mediation Center
Wal-Mart Stores, Inc. v. Consolidated Motors, Inc./Van Flury
Case No. D2006-0085
1. The Parties
Complainant is Wal-Mart Stores, Inc., Arkansas, United States of America, represented by Welsh & Katz, Ltd, United States of America.
Respondent is Consolidated Motors, Inc./Van Flury, Arizona, United States of
America, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <walmartautosales.com> is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2006. On January 19, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On the same date, Tucows transmitted by email to the Center its verification response. On February 1, 2006, Complainant filed an amendment identifying the Respondent Consolidated Motors, Inc. The Center verified that the Complaint and the amendment thereto 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 Respondent of the Complaint, and the proceedings commenced on February 2, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2006. The Response was filed with the Center on February 10, 2006.
The proceedings were suspended on February 27, 2006, and were re-instituted on March 27, 2006.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on April 5, 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, paragraph 7.
In Respondent’s own words, its formal submission was not actually filed as a Response, but was a so-called Motion to Dismiss on the ground that Van Flury is not the registrant of the <walmartautosales.com> domain name. However, the Panel notes that Van Flury is the administrative contact for the disputed domain name. Furthermore, both Consolidated Motors and Van Flury have the same address and contact details, as reflected in the WHOis information, and were properly served, pursuant to the Rules, paragraph 2(a). The Center went out of its way to comply with requests from Mr. Van Flury to serve him with the Complaint at a third address.
Though there is no Policy provision for the handling
of motions, the Panel nevertheless finds that Respondent’s jurisdiction
arguments are without merit. The Panel also declines to consider the “response”
sent in its discussion and findings on the merits below, since the Respondent
did not address any of the formal requirements under the Policy or the Rules.
4. Factual Background
Complainant Wal-Mart is the world’s largest
retailer and the owner of the very well-known trademark WAL-MART, in commercial
use since 1962. Complainant holds various trademark registrations for WAL-MART,
with and without other words.
5. Parties’ Contentions
1. Respondent’s <walmartautosales.com> domain name is confusingly similar to Complainant’s WAL-MART mark.
2. Respondent does not have any rights or legitimate interests in the <walmartautosales.com> domain name.
3. Respondent registered and used the <walmartautosales.com> domain name in bad faith.
B. Respondent did not submit a substantive Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a substantive response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum, July 31, 2000), (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant’s registrations of its WAL-MART mark with the USPTO sufficiently establish Complainant’s rights in the mark under Policy, paragraph 4(a)(i). See Innomed Technologies, Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum, February 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”); see also VICORP Restaurants, Inc. v. Anastasios Triantafillos, FA 485933 (Nat. Arb. Forum, July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office”.)
Complainant has demonstrated that Respondent’s <walmartautosales.com>
domain name is confusingly similar to Complainant’s WAL-MART mark. Respondent’s
disputed domain name incorporates Complainant’s mark in its entirety,
adding only the descriptive terms “auto sales” and the generic top-level
domain “.com”. Neither of these additions to Complainant’s
mark negates the confusing similarity between the disputed domain name and Complainant’s
mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
WIPO Case No. D2001-0026 (March 23, 2001),
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Sony Kabushiki Kaisha v. Inja, Kil, WIPO
Case No. D2000-1409 (December 9, 2000), (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus the Policy, paragraph 4(a)(i)
The Panel finds that the Policy, paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant states that, originally, the website at <walmartautosales.com> contained links to various websites that sell cars. Respondent at some point removed that content and simply showed that the domain was for sale for $6100. Respondent is therefore not making a bona fide offering of goods. See Bank of America Corporation v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum, September 30, 2003), (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under the Policy, paragraph 4(c)(i) and it is not a legitimate noncommercial or fair use under the Policy, paragraph 4(c)(iii).”)
Respondent is not commonly known by the name WAL-MART, nor is Respondent authorized
by Complainant to use its mark. See Compagnie de Saint Gobain v. Com-Union
Corp., WIPO Case No. D2000-0020 (March
14, 2000), (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The Panel finds that the Policy, paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent offered to sell the <walmartautosales.com> domain name to
Complainant for a figure well in excess of its costs, itself an indication of
bad faith. See EMI PLC v. Jason Mace, WIPO
Case No. D2000-0712 (August 30, 2000), (finding an offer for sale prima
facie evidence of bad faith).
Complainant operates thousands of retail stores throughout the United States
and in many other countries. WAL-MART is a very well-known mark and, therefore,
the Panel finds that Respondent had actual knowledge of Complainant’s
trademark rights. Respondent also had constructive notice as a matter of law
of Complainant’s trademark rights in the WAL-MART Mark. Respondent could
not have registered the infringing domain name with the intention of using them
legitimately. See Ticketmaster Corp. v. Spider Web Design, Inc.,
WIPO Case No. D2000-1551 (February 4,
2001), (“active or constructive knowledge of the Complainant’s rights
in Trademarks is a factor supporting bad faith”); see also Cellular
One Group v. Paul Brien, WIPO Case No.
D2000-0028 (March 10, 2000), (as a matter of United States law, respondent
had prior constructive or actual knowledge of complainant’s trademark
because the mark was registered).
The Panel finds that the Policy, paragraph 4(a)(iii) has been satisfied.
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 <walmartautosales.com> be transferred to Complainant.
Sandra J. Franklin
Dated: April 11, 2006