Wal-Mart Stores, Inc. v.

Walsucks and Walmarket Puerto Rico

WIPO Case No. D2000-0477

The Complainant is Wal-Mart Stores, Inc., with place of business in Bentonville,

Arkansas, USA and the Respondents are Walsucks and Walmarket Puerto Rico, with
address of Canada.1

Wal-Mart had filed nine complaints under the UDRP policy contesting fifteen domain
names and out of these, there are 5 domain names which were related to disparaging
use of the Walmart registered mark.2

The Complainant initiated the proceedings by the filing of a complaint via e-mail,
received by the WIPO Arbitration and Mediation Center ("WIPO") on May 23, 2000.

FACTS:

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.3 Wal-Mart Stores Inc. holds registrations
for the mark Wal-Mart in the U.S. and Canada. It also holds registrations for the
mark Wal-Mart in other 46 countries, including Thailand, the U.K. and the China. The
registered websites of Wal-Mart are: www.walmart.com, www.wal-mart.com, and
www.walmartstores.com and the disputed domain names are
"walmartcanadasucks.com", "wal-martcanadasucks.com","walmartuksucks.com",
"walmartpuertorico.com" and "walmartpuertoricosucks.com" which were registered
from 13th May - 17th May, 2000.

The issue was whether the disputed domain names constitute an abusive registration
and use under the UDRP ?

The Panel held that the Respondents, Walsucks and Walmarket Puerto Rico were
engaged in abusive registration of the domain names walmartcanadasucks.com wal-

1
Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico Case No. D2000-0477 at
https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0477.html
2
See David Streitfeld, Making Bad Names for Themselves, WASH. Posr, Sept. 8,2000, at A01.
3
http://www.casesofinterest.com/tiki/Wal-Mart+Stores,+Inc.+v.+Walsucks
martcanadasucks.com, walmartuksucks.com, walmartpuertorico.com and
walmartpuertoricosucks.com and within the meaning of paragraph 4(a) of the UDRP
the Panel found that the Respondent’s domain names is similar to the trademark of
Complainant which will create confusion in public and and that the Respondent has
no legitimate interest in respect of domain name and also found out that the domain
name of the Respondent was registered in bad faith. The Panel ordered that the
Respondent’s disputed domain names be transferred to the Complainant, Wal-Mart
Stores Inc.

Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd.

WIPO Case No. D2001-0398

The Complainant is Rolex Watch U.S.A., Inc., a New York corporation, represented
by Morgan & Finnegan, LLP and the Respondent is Spider Webs Ltd. represented
byBernard Lilse Mathews.4

The disputed domain names are “relojesrolex.com” and “erolexwatches.com”.

The Complainant initiated the proceedings by the filing of a complaint via e-mail,
received by the WIPO Arbitration and Mediation Center ("WIPO") on March 21,
2001.

FACTS:

Rolex is the exclusive distributor of Rolex watches in the United States. Rolex is
responsible for marketing and selling Rolex watches, watch bracelets, and related
products in the United States, and for maintaining control over the quality of ROLEX
products and services in this country. Rolex is the owner of US Trademark
Registration issued on January 15, 1915, for the trademark ROLEX covering watches,
clocks, parts of watches and clocks, and their cases and United States Trademark
Registration issued on February 23, 1993, for the trademark ROLEX covering
jewelry.

4
Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd. Case No. D2001-0398 at
https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0398.html
The domain names “relojesrolex.com”and “erolexwatches.com” were registered with
the Registrar on July 21, 1999 and November 11, 1999, respectively by the
Respondent. The Complainant, Rolex, sent a letter to the Respondent to transfer the
domain names or the consent to the deletion to the Complainant, Rolex but there was
no response from the Respondent’s side.

The issue was whether the disputed domain names constitute an abusive registration
and use under the UDRP ?

The Panel held that the Respondent, Spider Webs Ltd. was involved in abusive
registration of the domain names “erolexwatches.com” and “relojesrolex.com” and
the Panel ordered that the domain names “ to be transferred to the Complainant.

The Panel concludes that the disputed domain names “erolexwatches.com” and
“relojesrolex.com” are confusingly similar to Complainant’s registered trademark
ROLEX; (b) that Respondent has no rights or legitimate interest in the domain names;
and (c) that Respondent registered and used the domain names in bad faith.

CompUSA Mgmt. Co. v. Customized Computer Training

NAF Case No. FA95082

The Complainant is CompUSA Management Company, Dallas, USA and the

Respondent is Customized Computer Training, Atlanta, USA.5

The Complainant was registrant of United States trademarks “COMPUSA” and

“CompUSA.com”. Complainant has also registered the domain name
“CompUSA.com”. The registered domain names of Respondent are
“BANCOMPUSA.COM” and “STOPCOMPUSA.COM”.

The issue was whether the disputed domain names constitute an abusive registration
and use under the UDRP ?

The Panelist found out that the registered marks and domain names of the
Complainant are not confusingly similar and are certainly not identical to that of
Respondent’s registered domain names. No one could confuse 'COMPUSA' with the
5
NAF Case No. FA95082
disputed domain names i.e. 'STOPCOMPUSA.COM' and 'BANCOMPUSA.COM'."
The Respondent has legitimate interest in the domain names protected under the First
Amendment and the Respondent has not acted in bad faith. Respondent has registered
the domain names for the purpose of selling the name to Complainant or a
Competitor, he has not registered the names to prevent the Complainant from
registering the names, he has not registered the names for the purpose of disrupting
the business of a competitor. The Panel ordered that the relief requested by the
Complainant will not be given, the domain names are not to be canceled.