Nominet UK Dispute Resolution Service

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Cite as: [2003] DRS 1301

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Nominet UK Dispute Resolution Service

DRS Number 01301

Wal-Mart Stores, Inc. -v- Andre Power

Decision of Independent Expert

1. Parties:

Complainant: Wal-Mart Stores, Inc.
Country: USA

Respondent: Andre Power
Country: GB

2. Domain Name:

walmartbank.co.uk, wal-martbank.co.uk ("the Domain Names")

3. Procedural Background:

The complaint was lodged with Nominet electronically on 2 July 2003 and in hard copy on 4 July 2003. Nominet validated the complaint on 10 July 2003 and on the same day wrote to inform the Respondent of the complaint. The Complainant supplied Nominet with a postal address for the Respondent which was different from the one recorded in Nominet’s register for these registrations, although also in Essex, and with phone and fax numbers which were the same as those in the register. Nominet sent its correspondence to both postal addresses as well as to the fax number (which appears to have connected correctly to a fax machine) and to all available e-mail addresses.

No response was received from the Respondent. On 5 August 2003 Nominet wrote to the Complainant’s authorised representative Ms Janet Satterthwaite to inform her of this fact and that therefore no informal mediation would be possible, and of the option to refer the dispute to an independent expert for decision. To invoke this option, the fee needed to be paid by 19 August 2003. This letter was copied to Mr Power.

The Complainant paid by bank transfer and money was received in Nominet's account on 19 August 2003. However, due to an administrative error by the Complainant's bank, the amount received was £11.25 short of the £881.25 required and Nominet’s internal systems did not register the fee as having been paid. Later this matter came to light, and on 25 September 2003 Nominet contacted Ms Satterthwaite about it. She paid the outstanding amount by credit card, and on 29 September 2003 receipt of the full fee was confirmed.

On the same day Nominet asked this Expert, Claire Milne, whether she could act in this case. She confirmed that she had no connection with either of the parties and was accordingly appointed.

4. Outstanding Formal/Procedural Issues (if any):

I see no outstanding formal or procedural issues in this case.

The problem arising in relation to Nominet’s receipt of the fee has been recounted in order to account for the delay in starting work on the case. I attach no significance to it, as plainly the Complainant took action to pay the fee by the due date and the failure to achieve this was accidental.

5. The Facts:

On 9 December 1999 the Domain Names were registered in the name of Andre Power. Nominet’s Whois gives their renewal date as 9 December 2003, so presumably they were renewed on 9 December 2001.

In October 2002, Wal-Mart filed with WIPO’s Arbitration and Mediation Center a complaint about the same respondent’s registrations of wal-martbank.com, wal-martbank.net and walmartbank.net on 2 December 1999. This complaint (D2002-0966) was decided in the Complainant’s favour and the decision dated 17 December 2002, plus a response from Mr Power dated 8 November 2002 and a further submission of his dated 13 November 2002, have been included as part of the Complainant’s evidence.

Both on 10 July 2003 and on 9 October 2003, the Domain Names in a browser window resolve to a page at register.com which states that the name is registered there and offers the viewer a variety of services.

6. The Parties’ Contentions:

Complainant:

In summary, the Complainant argues as follows:

The Domain Names are similar to Wal-Mart’s service marks.

1. The Domain Names are similar to the Complainant’s name WAL-MART, consisting as they do of this name plus the generic term “BANK”. Nominet DRS cases 00068 (nokiagsm.co.uk), 00328 (mynokiastuff.co.uk) and 00394/5 (disneyholiday.co.uk) are cited in support of this view.

2. The mark WAL-MART is registered to the Complainant in numerous countries including the UK. One of the UK registrations covers (among others) Class 36, which includes banking services. Evidence is supplied of these assertions in the form of print-outs of the UK registrations.

3. Wal-Mart is well known worldwide, including in the UK. In support of this assertion the following evidence is supplied:

§ copies of Wal-Mart’s 2002 Report and Accounts.
§ a print-out of the section of Wal-Mart’s website dealing with its international operations, including four sentences on the UK, covering the acquisition of ASDA in July 1999 and the opening of a store bearing Wal-Mart’s name in Bristol in 2000.
§ Print-outs of UK press and Internet articles mentioning Wal-Mart:
o AOL UK and Wal-Mart: this time we’re serious, The Industry Standard, 9 August 2000
o Asda hooks up to Wal-Mart computing muscle, ZDNet UK, 21 March 2000
o More of a charity than a supermarket, review of Asda by Michelle Scott on dooyoo.co.uk review website, 9 November 2001
o Asda may bring Wal-Mart’s urban store concept to UK, The Independent, 2 October 2002
o George Fashions a jobs boom @ Asda, Daily Mirror, 14 August 2002
o People: moving places, Financial Times, 2 October 2002
o PowderJect jabs in store, Financial Times, 2 October 2002
o Wal-Mart helped by bargain hunters, BBC News, 14 May 2002

4. Wal-Mart provides banking services within its Wal-Mart Supercenters and Asda offers financial services on its website, which also displays the Wal-Mart mark. Both these assertions are supported by website print-outs.

The Domain Names are Abusive Registrations.

5. The Respondent has no rights or legitimate interests in respect of the Domain Names. This assertion is unsupported.

6. The responses that Mr Power submitted in WIPO case D2002-0966 made it quite clear that in that case he registered the disputed names with the intent to profit, and that he has done the same with respect to the trademarks of others. Quotations from those responses are cited in support of these assertions, and the responses themselves are included. The Complainant infers that a similar profit motive underlies the registration of the current Domain Names.

7. The Respondent has engaged in a pattern of making abusive registrations. The cases of royalascot.net and londonmarathon.net are cited as examples. An email from Mr Power to Ms Satterthwaite dated 8 November 2002 is also provided as evidence that he wished to sell the disputed names. This runs:

“Please find respondents defence with regard to the Domain titles you seek to usurp. If you wish to advise or negotiate or otherwise discuss, I suggest you contact me direct”.[sic]

Respondent:

The Respondent has not responded in this instance. The following points from his submissions in the WIPO case may be worth noting.

1. Ownership of a trademark does not imply ownership of that mark combined with any other randomly chosen word. For example, in the UK there is a Walmart Brass Ltd which is nothing to do with Wal-Mart Inc.

2. At the date of registration, the Complainant had not registered Wal-Mart Bank or any similar mark, although on 28 August 2002 they did register walmartbank.org and wal-martbank.org. At November 2002 they were not providing a Wal-Mart Bank service.

3. There are no Wal-Mart stores in the UK, apart from the one cited by the Complainant, of which the Respondent had no previous knowledge.

4. The Respondent “has traded domain titles, normally non-contentious, for three years to date and ensures not one but 12 potential legitimate uses for a site, before purchasing, in order to maximise its future potential”. Several examples are given of such potential uses for the disputed names, including protest and memorabilia sites.

5. No use had been made of the disputed names.

6. The delay in bringing the case puts the Complainant’s motives at question. It appears that they are not trying to claim their own property but dispossessing the Respondent of his, which he acquired in what “may turn out to be a prescient slice of opportunism”. Being without large resources and in England makes him “easy pickings for a multi national to dispossess of some virtual real estate they wish to obtain for free”.

7. Wal-martbank.co.uk and walmartbank.co.uk were registered by PHAB, which was an acronym of the original four partners’ surnames. PHAB was registered in the UK but never subsequently traded as the partners had a hostile split.

8. The Respondent does not admit that he is a habitual and professional cybersquatter, that he hoped to gain financially by registering these domain names and selling them back to Wal-Mart, or that he was aware of any rights with regard to Wal-Mart. No significance should be attached to the passing reference to negotiation in his email to Ms Satterthwaite of 8 November 2002.

7. Discussion and Findings:

Complainant’s Rights

In common with other Experts, I dismiss the hyphen in wal-martbank as insignificant. All my comments below therefore apply equally to both the Domain Names in question.

According to Nominet’s Dispute Resolution Policy 2 a i, the Complainant needs to show rights in a name or mark which is “identical or similar to the Domain Name”. The Complainant has clearly demonstrated rights in the name Wal-Mart. They have not attempted to show rights in the name Wal-Mart Bank, so I am faced with the question of whether “Wal-Mart” is similar to walmartbank in the sense proper to the Policy.

The Policy plainly does not mean “similar” to be interpreted in a very broad way. (For example, some might say that “Wal-Mart” written backwards, or “Tram-Law”, was similar to Wal-Mart, but this would not be similar for our purposes). In my view, “similarity” must be assessed in the context of the Policy as a whole. A key criterion will be whether the name is sufficiently similar to be likely to confuse people into believing that it is connected with the Complainant. This implies considering the Complainant’s business and public perception of it, as well as the specific words involved.

I find that the name is similar in this sense, because the compound name could very plausibly be used by the Complainant to refer to a part of its business. Irrespective of Wal-Mart’s actual activities or plans, supermarkets in the UK are increasingly moving into banking, as anyone who enters them has been aware for some years. The name therefore would readily suggest a normal and unsurprising business activity to a UK consumer who had heard of Wal-Mart.

This finding does not, of course, extend to other combinations of Wal-Mart and another term. For example, I might well not find walmartbrass or walmartsucks similar to Wal-Mart in the sense proper to the Policy.

Abusive Registration

Nominet’s Dispute Resolution Policy (1) defines Abusive Registration as a Domain Name which either:

i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights, or

ii. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Complainant makes no reference to any use of the disputed names, from which I infer that there probably has been none (apart from the “parking” website mentioned under 5 above). I therefore have to consider the circumstances of the registration of the name in December 1999.

The fact that the Respondent registered these .co.uk Domain Names with Nominet within a week of registering their .com and .net equivalents makes it highly probable, in my view, that his intentions were similar in the two cases. His mention of the .co.uk names in his response to D2002-0966 confirms this view.

Given Nominet’s efforts to notify the Respondent and the nature of his contact details, I find it very probable that he is aware of this proceeding but has chosen not to respond. I therefore presume that he does not wish to add to or otherwise amend his earlier relevant comments.

I have to address the question of whether the Respondent could have been unaware of Wal-Mart’s mark when he registered these names. On general grounds of Wal-Mart’s profile in the UK I think it unlikely. Unfortunately, the press cuttings provided by the Complainant do not help me, as they all post-date the time of registration. However, from my own recollection there was a good deal of UK press coverage of Wal-Mart’s acquisition of Asda during 1999. Furthermore, it is apparent from the Respondent’s submissions that for several years he has been an interested observer of the business scene on both sides of the North Atlantic. I cannot believe that in late 1999 he could have been unaware of Wal-Mart, a very large and prominent US company with a recent significant acquisition in the UK.

Of course, the Respondent’s claim that he was unaware of Wal-Mart’s rights may be accurate, in a narrow sense.

By the Respondent’s own account, he was engaged at the time in the business of speculative purchase of domain names with a view to selling them at a later date. His acquisition of the disputed Domain Names must be seen in this light. The question therefore is whether his choice of these Names to register was influenced by Wal-Mart’s reputation. In his WIPO submission, the Respondent provided several examples of alternative, arguably legitimate, uses for the .com and .net names. I admire his creativity, but on the whole these strike me as far-fetched. While it may not have been his only potential application, the possible sale of walmartbank.co.uk for a large sum either to Wal-Mart or to a competitor of Wal-Mart must have been a major factor in his decision to acquire the Domain Name. On the balance of probabilities I find that it was the major factor.

Paragraph 3 a (i) A of the Policy includes as a factor that may be evidence of an Abusive Registration:

circumstances indicating that the Respondent has registered the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name.

The preceding discussion shows that the evidence on this point is clear. Accordingly, I find that the registration took unfair advantage of the Complainant’s Rights and was therefore abusive.

I do not need to address the question of whether the Respondent was engaged in a pattern of making Abusive Registrations. This is fortunate, since no evidence has been provided on this issue. (The Complainant’s references to royalascot.net and londonmarathon.net are only allegations of abusive registration, which were denied by the Respondent).

8. Decision:

The Complainant has Rights in a name that is similar to the Domain Name. The Registration took unfair advantage of the Complainant’s Rights. The Registration is therefore Abusive. The Complainant has a potential legitimate use for the Domain Name. As requested by the Complainant, I therefore direct that the Domain Name should be transferred to the Complainant.

Claire Milne

Date: 10 October 2003