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WalmartDelivery.com : Infringing #domain lost in #UDRP filed by #Walmart

Walmart is the world’s biggest retailer and its WALMART mark is well-established. It’s odd that someone would attempt to build a brand or service riding the company’s coattails.

In the case of WalmartDelivery.com the registrant appears to have assumed just that. Walmart filed a UDRP which the Respondent responded to, denying that she engaged in any type of competition or infringement against the Complainant.

And yet, on the web site itself, the following text appears:

Walmart filed a domain dispute against me, the domain owner and entrepreneur who wanted to work with Walmart in hopes of creating a better mousetrap. Sam Walton was a man who had vision. It is sad day where a forward thinker who registered a domain 5 years ago and now Walmart wants domain.

Definitely a waste of registration fees, already paid for 2015-2023 by the Respondent. The sole panelist at NAF stated:

Respondent has argued that she is not offering services in competition with Complainant and submitted several screenshots of emails and handwritten notes of alleged telephone conversations purporting to support her contentions. However, the Panel is unable to make sense of the evidence submitted which does not appear to support Respondent’s arguments. Having regard to the particular circumstances in the present case, including the evidence filed by the parties, the Panel is of the view that Respondent has failed to use the disputed domain name in connection with 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).

The Panel has noted that Respondent had made use of the disputed domain name only after commencement of the proceedings by publishing some form of letter or notice on the website. In the Panel’s view, the Panel draws an adverse inference of bad faith conduct on the part of Respondent who appears to attempt to make use of the disputed domain name only after being served with the Complaint.

Final decision: transfer the infringing domain WalmartDelivery.com to the Complainant. Full details follow:

Walmart Inc. v. Marie Nelson

Claim Number: FA2011001920215

PARTIES

Complainant is Walmart Inc. (“Complainant”), represented by AJ Schumacher of Foley & Lardner LLP, United States. Respondent is Marie Nelson (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <walmartdelivery.com>, registered with GoDaddy.com, 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.

 

Jonathan Agmon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.

 

On November 11, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <walmartdelivery.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 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@walmartdelivery.com. Also on November 16, 2020, 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 found compliant on November 21, 2020.

 

On November 25, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jonathan Agmon as Panelist.

 

On December 2, 2020, the Respondent and Complainant filed Additional Submissions of Response and Complaint respectively.

 

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 argues that the disputed domain name is identical to Complainant’s WALMART trademark as Respondent’s addition of the term a descriptive term “delivery” and a gTLD “.com” do not distinguish the disputed domain name from Complainant’s trademark.

 

Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name.

 

Complainant further argues that the disputed domain name was registered and is being used in bad faith. Complainant argues that Respondent had full knowledge of Complainant’s trademark and that the disputed domain name was registered to confuse Internet users whilst benefitting from Complainant’s goodwill and reputation.

 

B. Respondent

Respondent submitted a Response to Complainant’s contentions, asserting that the disputed domain name was legitimately purchased in good faith and that she has rights and legitimate interests the disputed domain name.

 

C. Additional Submissions

Complainant further argues that Respondent has failed to meet the legal tests required by the Policy and the evidence submitted by the Respondent do not support her arguments.

 

Respondent further denies Complainant’s assertions and further argues that the disputed domain name was not registered in bad faith and that Respondent does not sell or offer consumer products or goods at the domain name’s website which competes with Complainant.

FINDINGS AND DISCUSSION

Complainant is Walmart Inc., of Bentonville, Arkansas, and its related corporate subsidiaries and affiliates, including Walmart Apollo, LLC (collectively, “Walmart” or “Complainant”). Since its founding more than fifty (50) years ago, Complainant has grown exponentially into one of the world’s largest retailer, offering a wide variety of consumer goods and services throughout the United States, including via a family of trademarks consistently of or featuring its renowned WALMART brand. Each week, nearly 265 million customers and members visit Complainant’s approximately 11,500 stores under 56 banners in 27 countries and eCommerce websites, a substantial portion of which prominently feature or display the prominent WALMART mark. Complainant currently employs over 2.2 million associates worldwide.

 

Complainant has continuously and exclusively since at least as early as 1962, through itself and/or its predecessors in interest, used WALMART as a trademark, alone or in combination with other word and/or design elements, in connection with Complainant’s various goods and services, including retail store services.

 

Complainant owns numerous trademark registrations throughout the world consisting solely of or featuring WALMART, including but not limited to numerous U.S. registrations (collectively, the “Marks”):

 

– “WALMART” (U.S. Registration No. 4474440) incontestable first use in 1962;

– “WALMART.COM” (U.S. Registration No. 4180335) incontestable first use in 2000; and

– “WALMART” (device) (U.S. Registration No. 3612344) incontestable first use in 2008.

 

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

Paragraph 4(a)(i) of the Policy requires Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

 

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

 

Complainant is the owner of the numerous registered U.S. trademarks of “WALMART”.

 

Respondent asserts that the disputed domain name is not registered as a trademark and therefore it is not identical or confusingly similar to Complainant’s Marks.

 

The Panel disagrees with Respondent’s argument as the legal test under UDRP Policy 4(a)(i) is whether the domain name itself is identical or confusingly similar to a trademark of service mark in which Complainant has rights. It is well established that the addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.). Past Panelists have found that such changes are not typically sufficient to distinguish a domain name from an incorporated mark. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant’s mark does not distinguish the Domain Name from Complainant’s trade mark pursuant to the Policy.”). It is also established that an addition of a gTLD to a trademark is irrelevant in the analysis under Paragraph 4(a)(i) of the Policy.

 

In the present case, the Panel finds that there is confusing similarity between Complainant’s trademark and Respondent’s disputed domain name as the latter wholly incorporates Complainant’s “WALMART” mark with the addition of a descriptive term “delivery” and a gTLD “.com”.

Rights or Legitimate Interests

In the present case, Complainant has demonstrated prima facie that Respondent lacks rights or legitimate interests in respect of the disputed domain name through providing evidence of trademark registration long before Respondent registered the disputed domain name. In addition, Complainant also showed that Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WALMART mark in any way. The WHOIS information provided by Complainant identifies the registrant of the disputed domain name as “Marie Nelson” which does not resemble the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017). There is also no information in the record which shows that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Further, the addition of the term “delivery” to the disputed domain name triggers an inference of affiliation with Complainant and does not constitute fair use of the disputed domain name. (See WIPO Overview 3.0, section 2.5.1.).

 

Once Complainant establishes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to Respondent to show that it has rights or legitimate interests in respect of the disputed domain name. 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)); 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”); WIPO Overview 3.0, section 2.1.

 

Respondent argues that by registering the domain name in 2015 and through sending a Tweet to Complainant in 2016, she has obtained some form of rights or legitimate interests in the domain name. Respondent submitted several screenshots comprising of a Tweet from Walmart in 2016, handwritten notes and email extracts to Complainant in September 2020.

 

Having reviewed the evidence submitted by Complainant and Respondent, the Panel is not persuaded that the Respondent has rights or legitimate interests in the domain name. Respondent is neither known by the domain name nor is she authorized or licensed by Complainant to use the domain name. The evidence submitted by Respondent does not show that Complainant was aware of or had any knowledge of Respondent prior to commencement of the proceedings. Such evidence is especially crucial when the disputed domain name comprises a trademark that is associated so clearly with Complainant.

 

The Panel has also briefly considered the Forum’s prior decision in Wal-Mart Stores, Inc. v. Cabrera, FA1008001344053 (Forum Nov. 8, 2010) and is of the view that the facts in that case are distinguishable from the present case and therefore not applicable here. In the prior case, the complainant in the prior case was aware of the respondent having issued a cease and desist letter to the respondent prior to commencement of the proceedings. The respondent was actively using the domain name and operating a website for over six years after the issuance of the cease and desist letter of which the complainant was well aware. Further, the respondent had given disclaimers to Internet users who visit his website to obviate any likelihood of confusion or affiliation with the complainant.

 

The facts in the present case are different from the prior case as a cease and desist letter was not issued and there is no indication that Complainant was aware of Respondent prior to commencement of the proceedings. The domain name was never used by Respondent and the domain name resolved to an inactive website up until the Complaint was served on Respondent. Respondent appears to have displayed a form of letter or statement on the domain name website. In this regard, it is well established that it is the respondent’s conduct at the time the complaint was filed that is the relevant time period for assessment under the UDRP Policy. See Retail Royalty Co., FA1409001580871; State Farm Mut. Auto. Ins. Co. v. AK, FA1502001603714 (Forum Mar. 28, 2015)

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

Paragraph 4(a)(iii) of the Policy requires Complainant to show that Respondent registered and is using the disputed domain names in bad faith. Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

 

Finding of registration in bad faith requires a showing that Respondent is taking an unfair advantage of otherwise abuses the complainant’s mark (WIPO Overview 3.0, 3.1). UDRP paragraph 4(b)(i) provides a non-exclusive scenario that constitutes evidence of a respondent’s bad faith:

 

(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.

Complainant’s trademark registration long before the Respondent registered the disputed domain name is suggestive of Respondent’s bad faith registration and use of the disputed domain name. In the present case, the evidence shows that the Complainant registered its first trademark in 1962 and as acquired significant fame since. The Respondent did not deny that it registered the disputed domain name with full knowledge of Complainant’s registered trademark, but argued that the addition of the descriptive term “delivery” was sufficient to generate a new “mark” that is different to the Complainant’s registered trademarks. The Panel reiterates that for the purpose of the Policy the descriptive term “delivery” is ignored or given very little weight. The fact that the Respondent registered the disputed domain name, with full knowledge that it is identical or substantially similar to the Complainant’s registered and famous trademark is a clear indication of bad faith registration and use. The fact that Respondent wanted to use the disputed domain name in connection with services to be offered to Complainant is unpersuasive since no evidence was brought forth to show that the Respondent acted diligently to execute such intent and in any event does not explain why Respondent failed to seek Complainant’s permission to use their mark in connection with the registration or the proposed plan even years after registration took place.

Complainant argues that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent was passive holding the disputed domain name. Such use may not be considered a bona fide offering or a legitimate use under Policy 4(c)(i) or (iii). See Vitacost.com, Inc. v. Private Whois Service, FA1006001332810 (Forum August 12, 2010) (the Panel finds that Respondent’s failure to make an active use of a domain names constitutes bad faith use when the domain name registration occurred after the complainant acquired rights in a mark); See also Dell Inc. and Michael & Susan Dell Foundation v. Donald Walker, FA2008001907527 (Forum September 2, 2020) (The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trademark of another. Passive holding of a domain name containing an established third-party mark can be bad faith registration and use). See also See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii)); see also See Kellogg North America Company v. Giovanni Laporta / Yoyo.Email, FA1504001614324 (Forum June 9, 2015) (the Panel notes that there is a consensus among panelists that the mere passive holding of a disputed domain name may be evidence not only of bad faith registration, but also indicative of bad faith use). In the present case, Complainant has provided screenshots of the disputed domain name’s resolving inactive webpage. Such passive use is another indication of bad faith registration and use of the disputed domain name.

Respondent has argued that she is not offering services in competition with Complainant and submitted several screenshots of emails and handwritten notes of alleged telephone conversations purporting to support her contentions. However, the Panel is unable to make sense of the evidence submitted which does not appear to support Respondent’s arguments. Having regard to the particular circumstances in the present case, including the evidence filed by the parties, the Panel is of the view that Respondent has failed to use the disputed domain name in connection with 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).

The Panel has noted that Respondent had made use of the disputed domain name only after commencement of the proceedings by publishing some form of letter or notice on the website. In the Panel’s view, the Panel draws an adverse inference of bad faith conduct on the part of Respondent who appears to attempt to make use of the disputed domain name only after being served with the Complaint.

Based on the evidence presented to the Panel and the total circumstances of this case, including the registration of the disputed domain name long after the registration of Complainant’s marks, the significant fame and high distinctive nature of Complainant’s mark and the lack of any evidence showing any use of the disputed domain name prior to the commencement of proceeding,the Panel finds that the disputed domain name was registered and is being used in bad faith.

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 <walmartdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Jonathan Agmon, Panelist

Dated: December 8, 2020


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