Wahl Clipper Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2012001925692
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlcorp.com>, registered with Media Elite Holdings Limited.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 18, 2020; the Forum received payment on December 18, 2020.
On December 22, 2020, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <wahlcorp.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 December 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 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@wahlcorp.com. Also on December 29, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Wahl Clipper Corporation, markets and sells hair care products. Complainant has rights in the WAHL mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 527,562, registered on July 11, 1950). Respondent’s <wahlcorp.com> domain name is confusingly similar to Complainant’s WAHL mark because it incorporates the entire mark and simply adds the generic term “corp” along with the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <wahlcorp.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WAHL mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to host pay-per-click hyperlinks to competing products and services.
Respondent registered and uses the <wahlcorp.com> domain name in bad faith. Respondent uses the disputed domain name to confuse consumers and attract them to its website where Respondent hosts pay-per-click competing hyperlinks. Additionally, Respondent had constructive actual knowledge of Complainant’s rights in the WAHL mark based on Complainant’s long-term use of the mark, the fame of the mark, and Respondent’s use of the disputed domain name to host hyperlinks to Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Wahl Clipper Corporation, markets and sells hair care products. Complainant has rights in the WAHL mark based on registration with the USPTO (e.g., Reg. No. 527,562, registered on July 11, 1950). Respondent’s <wahlcorp.com> domain name is confusingly similar to Complainant’s WAHL mark.
Respondent registered the <wahlcorp.com> domain name on November 27, 2020.
Respondent does not have rights or legitimate interests in the <wahlcorp.com> domain name. Respondent uses the domain to host pay-per-click hyperlinks to competing products and services.
Respondent registered and uses the <wahlcorp.com> domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the WAHL mark based on registration with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent’s <wahlcorp.com> domain name is confusingly similar to Complainant’s WAHL mark because it incorporates the entire mark and simply adds the generic term “corp” and the “.com” gTLD.
Respondent does not have rights or legitimate interests in the <wahlcorp.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the WAHL mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, . . there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information lists “Domain Administrator / Fundacion Privacy Services LTD” as the registrant and no information suggests Complainant has authorized Respondent to use the WAHL mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Respondent does not use the <wahlcorp.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead Respondent uses the domain to host pay-per-click hyperlinks to competing products and services. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”).
Respondent registered and uses the <wahlcorp.com> domain name in bad faith because Respondent uses the disputed domain name to confuse consumers and attract them to its website where Respondent hosts pay-per-click competing hyperlinks. The use of a disputed domain name to host pay-per-click hyperlinks to competing goods and services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the WAHL mark based on Complainant’s long-term use of the mark, the fame of the mark, and Respondent’s use of the disputed domain name to host hyperlinks to Complainant’s products. Panels have found actual knowledge based on the fame of a mark and the use of the mark to offer competing products and services. See 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 has used the WAHL mark for over 100 years. Since the hyperlinks on the resolving webpage for the disputed domain name reference Complainant’s WAHL branded products, Respondent must have known of Complainant’s rights in the WAHL mark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith the Panel may also find bad faith per Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahlcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 1, 2021
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