Wal-Mart Stores Inc. v. Walsucks and Walmarket Puerto Rico
WIPO Case No. D2000-0477
FACTUAL BACKGROUND
The Complainant, Wal-Mart Stores Inc., is one of the world’s largest retailers. Its stores are discount retail stores, grocery stores, pharmacies, membership warehouse clubs and deep discount warehouse outlets. It operates these stores throughout the United States, employing some 600,000 workers. In addition to its U.S. operations, Wal-Mart operates hundreds of retail stores in Canada, Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany.
Wal-Mart Stores Inc. holds registrations for the mark Wal-Mart for use in retail department stores in the U.S. and Canada. It also holds registrations for the mark Wal-Mart in 46 countries, including Thailand, the U.K. and the People’s Republic of China. The Wal-Mart mark has been in continuous use in the U.S. since 1962 and is used in the Complainant’s extensive advertising of its services and merchandise on television, websites, etc. Among Wal-Mart’s registered websites are: www.walmart.com, www.wal-mart.com, and www.walmartstores.com.
The Respondents, who share a single administrative contact (Kenneth Harvey), registered the domain names walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com between May 13-17, 2000. Mr. Harvey had been involved in a prior WIPO Panel Decision conducted under the UDRP, Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000, in which Harvey was found to have abusively registered and used the domain name www.WalMartCanada.com.
PROCEDURAL HISTORY
Wal-Mart Stores Inc. initiated the proceeding by the filing of a complaint with the WIPO Arbitration and Mediation Center (WIPO) on May 23, 2000. On May 26, 2000, Respondent requested that WIPO refuse to accept Wal-Mart’s complaint on grounds that Respondent had filed a complaint with the Internet Corporation for Assigned Names and Numbers (ICANN) based on an earlier administrative panel determination against Respondent, asserting that WIPO is in a conflict of interest position. On May 28, WIPO rejected Respondent’s request.
On May 29, 2000, WIPO requested that Tucows.com (registrar of the domain names at issue) verify registration of domain name by the Respondent. Tucows.com verified the registration.
On June 26, 2000, Respondent submitted his response to WIPO and to Wal-Mart.
On July 12, 2000, Complainant submitted a Supplemental Reply to the WIPO and the Respondent. On July 15, 2000, Respondent submitted his Response to the Supplemental Reply to the WIPO and to Wal-Mart.
ISSUE
Does the Respondents’ registration and use of walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com constitute an abusive registration and use under the UDRP?
HOLDING
Yes. The Respondents, Walsucks and Walmarket Puerto Rico engaged in abusive registration of the domain names wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com within the meaning of paragraph 4(a) of the UDRP. The WIPO ordered that the domain names wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com be transferred to the Complainant, Wal-Mart Stores Inc.
REASONING
Under paragraph 4(a) of the UDRP, Wal-Mart Stores Inc. must prove each of the following three elements of its case in order to obtain the requested relief:
1. Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. Respondent’s Domain Name has been registered and is being used in bad faith.
The WIPO panel held that:
(A) IDENTICAL OR CONFUSINGLY SIMILAR. The Panel found that in Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000, the Wal-Mart trademark was well-recognized and famous in the United States, Canada and other countries. The instant Panel accepted that determination.
The Panel found that the Respondents’ registration of wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com, similar to that of the Respondent in Wal-Mart Stores, Inc. v. Walmarket Canada, fully incorporated the Wal-Mart mark and merely attached a geographic term and/or a common descriptive term to the mark. The Panel found that the addition of a common or generic term following a trademark did not create a new or different mark in which Respondent has rights.
Applying the multifactor likelihood of confusion test put forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), the Panel found the domain names at issue to be confusingly similar to the Wal-Mart mark.
(B) RIGHTS OR LEGITIMATE INTERESTS. The Respondents characterized themselves as “domain name consultants,†acting in Wal-Mart Stores, Inc.’s interests. They claimed that they sought compensation for "the pivotal role they played in protecting Wal-Mart from future difficulties".
The Respondents also claimed a freedom of expression interest in establishing the wal-martcanadasucks.com and walmartuksucks.com domain names. The Panel found this claim to be contradicted by the Respondents’ own words. It found that a demand for payment was fundamentally inconsistent with the right of free expression. The Panel found this practice more akin to “extortion" than “free speech.â€
The Panel determined that Respondents’ intention for registering wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com was commercial, and not within the scope of fair use or legitimate noncommercial use permitted by paragraph 4(c)(iii) of the Policy.
(C) REGISTERED AND USED IN BAD FAITH. The Panel found that the Respondents’ demand for consulting fees, in addition to the registration of the disputed domain names, implied that the Respondent’s would refrain from using the disputed domain names or cede them to Wal-Mart Stores, Inc. if the consulting demands were met. Furthermore, the Respondents had threatened to disrupt Wal-Mart Stores, Inc.’s business if their consulting demands are not met.
The Panel determined that the Respondents registered the disputed domain names solely for the purpose of selling or otherwise transferring rights in them to the Complainant. The Panel then held that such practices constituted bad faith commercial gain within the meaning of paragraph 4(b)(i) of the UDRP.
Accordingly, the Panel determined that the practices of the Respondents constituted bad faith under the UDRP.
WIPO Case No. D2000-0477
FACTUAL BACKGROUND
The Complainant, Wal-Mart Stores Inc., is one of the world’s largest retailers. Its stores are discount retail stores, grocery stores, pharmacies, membership warehouse clubs and deep discount warehouse outlets. It operates these stores throughout the United States, employing some 600,000 workers. In addition to its U.S. operations, Wal-Mart operates hundreds of retail stores in Canada, Puerto Rico, Mexico, Brazil, Argentina, China, United Kingdom, Korea, Indonesia and Germany.
Wal-Mart Stores Inc. holds registrations for the mark Wal-Mart for use in retail department stores in the U.S. and Canada. It also holds registrations for the mark Wal-Mart in 46 countries, including Thailand, the U.K. and the People’s Republic of China. The Wal-Mart mark has been in continuous use in the U.S. since 1962 and is used in the Complainant’s extensive advertising of its services and merchandise on television, websites, etc. Among Wal-Mart’s registered websites are: www.walmart.com, www.wal-mart.com, and www.walmartstores.com.
The Respondents, who share a single administrative contact (Kenneth Harvey), registered the domain names walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com between May 13-17, 2000. Mr. Harvey had been involved in a prior WIPO Panel Decision conducted under the UDRP, Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000, in which Harvey was found to have abusively registered and used the domain name www.WalMartCanada.com.
PROCEDURAL HISTORY
Wal-Mart Stores Inc. initiated the proceeding by the filing of a complaint with the WIPO Arbitration and Mediation Center (WIPO) on May 23, 2000. On May 26, 2000, Respondent requested that WIPO refuse to accept Wal-Mart’s complaint on grounds that Respondent had filed a complaint with the Internet Corporation for Assigned Names and Numbers (ICANN) based on an earlier administrative panel determination against Respondent, asserting that WIPO is in a conflict of interest position. On May 28, WIPO rejected Respondent’s request.
On May 29, 2000, WIPO requested that Tucows.com (registrar of the domain names at issue) verify registration of domain name by the Respondent. Tucows.com verified the registration.
On June 26, 2000, Respondent submitted his response to WIPO and to Wal-Mart.
On July 12, 2000, Complainant submitted a Supplemental Reply to the WIPO and the Respondent. On July 15, 2000, Respondent submitted his Response to the Supplemental Reply to the WIPO and to Wal-Mart.
ISSUE
Does the Respondents’ registration and use of walmartcanadasucks.com, wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com constitute an abusive registration and use under the UDRP?
HOLDING
Yes. The Respondents, Walsucks and Walmarket Puerto Rico engaged in abusive registration of the domain names wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com within the meaning of paragraph 4(a) of the UDRP. The WIPO ordered that the domain names wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com be transferred to the Complainant, Wal-Mart Stores Inc.
REASONING
Under paragraph 4(a) of the UDRP, Wal-Mart Stores Inc. must prove each of the following three elements of its case in order to obtain the requested relief:
1. Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
2. Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. Respondent’s Domain Name has been registered and is being used in bad faith.
The WIPO panel held that:
(A) IDENTICAL OR CONFUSINGLY SIMILAR. The Panel found that in Wal-Mart Stores, Inc. v. Walmarket Canada, Case No. D2000-0150, dated May 2, 2000, the Wal-Mart trademark was well-recognized and famous in the United States, Canada and other countries. The instant Panel accepted that determination.
The Panel found that the Respondents’ registration of wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com, similar to that of the Respondent in Wal-Mart Stores, Inc. v. Walmarket Canada, fully incorporated the Wal-Mart mark and merely attached a geographic term and/or a common descriptive term to the mark. The Panel found that the addition of a common or generic term following a trademark did not create a new or different mark in which Respondent has rights.
Applying the multifactor likelihood of confusion test put forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), the Panel found the domain names at issue to be confusingly similar to the Wal-Mart mark.
(B) RIGHTS OR LEGITIMATE INTERESTS. The Respondents characterized themselves as “domain name consultants,†acting in Wal-Mart Stores, Inc.’s interests. They claimed that they sought compensation for "the pivotal role they played in protecting Wal-Mart from future difficulties".
The Respondents also claimed a freedom of expression interest in establishing the wal-martcanadasucks.com and walmartuksucks.com domain names. The Panel found this claim to be contradicted by the Respondents’ own words. It found that a demand for payment was fundamentally inconsistent with the right of free expression. The Panel found this practice more akin to “extortion" than “free speech.â€
The Panel determined that Respondents’ intention for registering wal-martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and walmartpuertoricosucks.com was commercial, and not within the scope of fair use or legitimate noncommercial use permitted by paragraph 4(c)(iii) of the Policy.
(C) REGISTERED AND USED IN BAD FAITH. The Panel found that the Respondents’ demand for consulting fees, in addition to the registration of the disputed domain names, implied that the Respondent’s would refrain from using the disputed domain names or cede them to Wal-Mart Stores, Inc. if the consulting demands were met. Furthermore, the Respondents had threatened to disrupt Wal-Mart Stores, Inc.’s business if their consulting demands are not met.
The Panel determined that the Respondents registered the disputed domain names solely for the purpose of selling or otherwise transferring rights in them to the Complainant. The Panel then held that such practices constituted bad faith commercial gain within the meaning of paragraph 4(b)(i) of the UDRP.
Accordingly, the Panel determined that the practices of the Respondents constituted bad faith under the UDRP.