Not Sam’s Club: #Walmart won #UDRP for MemberMarks.com

Walmart Apollo LLC is the holding company of the Sam’s Club stores and provides its members with the “Member’s Mark” range of products. It also owns the registered trademark MEMBER’S MARK.

The company brought a UDRP against the Palestinian holder of the domain MemberMarks.com that operates a web site imitating the look and feel of the Sam’s Club web site. The offending web site appears to have been put together in a haste, with product descriptions showing “Lorem ipsum” text.

Respondent admits that the disputed domain name is similar to the MEMBER’S MARK mark, but there is no risk of confusion between Respondent’s website and Complainant’s mark because the website for the disputed domain name does not try to impersonate Complainant or mislead users. Additionally, Respondent does not engage in typosquatting. Respondent also offers to add a disclaimer to the website.

The sole panelist at the Forum (formerly, National Arbitration Forum) delivered a finding that orders the transfer of the domain MemberMarks.com to the Complainant.

Walmart Apollo, LLC v. Syed Arslan Gillani

Claim Number: FA2108001957772

PARTIES

Complainant is Walmart Apollo, LLC (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is Syed Arslan Gillani (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <membermarks.com>, registered with Google LLC.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

David P. Miranda, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 2, 2021; the Forum received payment on August 2, 2021.

On August 3, 2021, Google LLC confirmed by e-mail to the Forum that the <membermarks.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@membermarks.com. Also on August 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

A timely Response was received and determined to be complete on August 23, 2021.

On August 27, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.

Complainant’s Additional Submission was received August 31, 2021 and was considered.

Respondent’s Additional Submission was received on September 6, 2021 and was considered.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Walmart Apollo, LLC, operates Sam’s Club stores which offers goods under its exclusive private brand MEMBER’S MARK. Complainant has rights in MEMBER’S MARK mark based on multiple trademark registrations of the mark with the United States Patent and Trademark Office (“USPTO”) dating to 2002 for trademark applications filed as early as 1998, and a date of first use in commerce as early as 1994. See Amend. Compl. Ex. 2. Respondent’s <membermarks.com> domain name is confusingly similar to Complainant’s MEMBER’S MARK mark as it merely moves the placement of the letter “S” in the mark and adds the “.com” generic top level domain (“gTLD”).

Respondent does not have rights or legitimate interests in the <membermarks.com> domain name. Respondent is not commonly known by the disputed domain and Complainant has not authorized Respondent to use the MEMBER’S MARK mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to direct users to its own website where it offers competing goods and Complainant’s own goods for sale. Furthermore, Respondent engages in typosquatting.

Respondent registered and uses the <membermarks.com> domain name in bad faith. Respondent offered to sell the disputed domain name. Additionally, Respondent uses the domain to offer competing and counterfeit goods for sale. Furthermore, Respondent had constructive and/or actual knowledge of Complainant’s rights in the MEMBER’S MARK mark.

B. Respondent

Respondent admits that the disputed domain name is similar to the MEMBER’S MARK mark, but there is no risk of confusion between Respondent’s website and Complainant’s mark because the website for the disputed domain name does not try to impersonate Complainant or mislead users. Additionally, Respondent does not engage in typosquatting. Respondent also offers to add a disclaimer to the website.

The Panel notes that the <membermarks.com> domain name was registered on June 28, 2020. See Amend. Compl. Ex. 1.

C. Additional Submissions

Complainant provided additional submissions in further support of its Complaint against Syed Arslan Gillani (“Respondent”). Complainant argues Respondent does not claim nor provide any evidence of its rights or legitimate interests in the Domain Name. Complainant contends the Response filed by Respondent provides further evidence of likelihood of confusion as to the source of the domain, and Respondent’s bad faith acts.

FINDINGS

Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.

DISCUSSION

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.”

Paragraph 4(a) of the Policy requires that Complainant must 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.

Identical and/or Confusingly Similar

Complainant asserts rights in the MEMBER’S MARK mark based on multiple registrations with the USPTO dating to 2002, for trademark applications filed as early as 1998, and date of first use in commerce as early as 1994. (e.g., Reg. No. 3,941,793, registered April 5, 2011). See Amend. Compl. Ex. 2. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides ample evidence of registration of the MEMBER’S MARK mark with the USPTO, and Complainant has rights in the mark under Policy ¶ 4(a)(i).

Respondent admits that Respondent’s <membermarks.com> domain name is similar to Complainant’s MEMBER’S MARK mark; The domain name merely moves the placement of the letter “S” in the mark and adds the “.com” gTLD. Small alterations to a mark and the addition of a gTLD do not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (concluding that the <classicmetalroofing.com> domain name was confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because changing the final term of the mark from “roofs” to “roofing” was a minor alteration and did not sufficiently distinguish the domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the disputed domain name is confusingly similar to the MEMBER’S MARK mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant argues that Respondent does not have rights or legitimate interests in the <membermarks.com> domain name because Respondent is not commonly known by the disputed domain and Complainant has not authorized Respondent to use the MEMBER’S MARK mark. Under Policy ¶ 4(c)(ii) WHOIS information can be used to determine if a respondent is commonly known by a disputed domain name and a lack of authorization to use a mark is a further showing that a respondent lacks rights or legitimate interests in the domain. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Syed Arslan Gillani” and Complainant asserts it has not authorized Respondent to use the MEMBER’S MARK mark. See Registrar Verification Email. Thus, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to direct users to its own website where it offers competing goods and Complainant’s own goods for sale. Using a disputed domain name to redirect users and offer competing goods or a complainant’s own goods for sale does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Complainant provides screenshots showing the website for the disputed domain name offers both competing products and products branded with Complainant’s own MEMBER’S MARK mark for sale. See Amend. Compl. Exs. 5–7. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

Furthermore, Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name since Respondent engages in typosquatting. Typosquatting is the purposeful misspelling of a mark and is evidence that a respondent lacks rights and legitimate interests. See Microsoft Corporation v. michal restl c/o Dynadot Privacy, FA1409001582219 (Forum Nov. 4, 2014) (finding that the respondent’s addition of a single-character to the complainant’s mark illustrated typosquatting and provided further evidence that the respondent’s lacked rights or legitimate interests in the disputed domain name). Here, Complainant contends that Respondent engages in typosquatting because the <membermarks.com> domain name moves the letter “S” from MEMBER’S MARK to the end of “marks.” Based upon all the facts and circumstances, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <membermarks.com> domain name in bad faith because Respondent offered to sell the disputed domain name. An offer to sell a disputed domain name may be evidence of bad faith under Policy ¶ 4(b)(i) if the respondent intended to make such an offer when registering the domain. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Complainant provides a copy of an email in which Respondent offers to sell the domain to Complainant if Complainant insists Respondent stops using the domain immediately. See Amend. Compl. Ex. 10. Thus, the Panel may find bad faith per Policy ¶ 4(b)(i).

Additionally, Complainant argues Respondent’s bad faith is evidenced by Respondent’s use of the disputed domain name to offer competing or counterfeit goods for sale. Using a disputed domain name to offer competing goods or counterfeit goods for sale may be evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see additionally Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant provides screenshots showing the resolving website for the disputed domain name previously offered competing products and some of Complainant’s own MEMBER’S MARK branded products for sale. See Amend. Compl. Exs. 5 – 7. The Panel finds bad faith per Policy ¶ 4(b)(iii) and (iv).

Furthermore, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the MEMBER’S MARK mark. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge may be found when a respondent uses a disputed domain name to offer competing goods or services and based on the fame of the mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) (“Mere constructive knowledge is insufficient to support a finding of bad faith.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant provides evidence that the MEMBER’S MARK mark is well known. See Amend. Compl. Exs. 3 & 4. Additionally, the resolving website for the disputed domain name featured competing products for sale, including Complainant’s own MEMBER’S MARK branded products. See Amend. Compl. Exs. 5 & 6. The Panel finds Complainant set forth facts sufficient to establish bad faith per Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <membermarks.com> domain name be TRANSFERRED from Respondent to Complainant.

David P. Miranda, Esq., Panelist

Dated: September 13, 2021

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