Wahl Clipper Corporation v. Theresa W Chavez female
Claim Number: FA2111001973154
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick, Illinois, USA. Respondent is Theresa W Chavez female (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <moreclippers-wahl.me> and <clippers-wahlonline.club>, registered with Dynadot, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2021; the Forum received payment on November 12, 2021.
On November 16, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <moreclippers-wahl.me> and <clippers-wahlonline.club> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@moreclippers-wahl.me, postmaster@clippers-wahlonline.club. Also on November 17, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a corporation engaged in the business of marketing and selling hair care products, including electric hair clippers and related products. Complainant has rights in the WAHL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 539,711, registered March 20, 1951). The disputed domain names are confusingly similar to Complainant’s WAHL mark simply adding the descriptive words “clippers”, “more”, a hyphen, and the generic top-level domain (“gTLD”) “.me” to form the domain name <moreclippers-wahl.me>, and the descriptive words “clippers”, “online”, a hyphen, and the gTLD “.club” to form the domain name <clippers-wahlonline.club>.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not licensed or authorized to use Complainant’s WAHL mark and is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent does not appear to offer any goods or services whatsoever through the disputed domain names.
iii) Respondent registered and uses the disputed domain names in bad faith as the domain names resolve to an inactive webpage. The disputed domain names make use of Complainant’s WAHL mark and strongly imply a connection therewith.
B. Respondent
Respondent did not submit a response in this proceeding.
1.The disputed domain names were registered on September 6, 2021.
2. Complainant has established rights in the WAHL mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 539,711 registered March 20, 1951).
3. The disputed domain names resolve to inactive websites.
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 asserts rights in the WAHL mark based upon registration with the USPTO (e.g., Reg. No. 539,711, registered March 20, 1951). Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the WAHL mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the <moreclippers-wahl.me> and <clippers-wahlonline.club> domain names are confusingly similar to Complainant’s mark because they wholly incorporate Complainant’s WAHL mark, simply adding the descriptive words “clippers”, “more”, a hyphen, and the gTLD “.me” to form the first domain name, and the descriptive words “clippers”, “online”, a hyphen, and the gTLD “.club” to form the second. Slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018). The addition of punctuation, including hyphens, do not sufficiently distinguish a disputed domain name from a registered mark for the purposes of Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003). The addition of top-level domains, such as “.club,” must also be ignored for the purposes of Policy ¶ 4(a)(i) analysis. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015); see also Compagnie des Montres Longines, Francillon S.A v. Jingjing Tang / Beijing shenmas clouds Network Technology Co., Ltd., FA 1591256 (Forum Dec. 29, 2014). Complainant notes the aforementioned distinctions are the only differences between the disputed domain names and the mark. Thus, the Panel finds that the disputed domain names are confusingly similar to the WAHL mark under Policy ¶ 4(a)(i).
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 Respondent lacks rights or legitimate interest in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the WAHL mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). When WHOIS information merely lists a privacy service as registrant, there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015); see also Tenza Trading Ltd. v. WhoisProtectService.net / PROTECTSERVICE, LTD., FA1506001624077 (Forum July 31, 2015). The WHOIS information for the disputed domain names lists the registrant as “Theresa W Chavez,” and there is no information in the record to show that registrant is commonly known by the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names.
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names merely resolve to inactive websites displaying the message “Stop!” When Respondent is not using a disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017); see also Kohler Co. v. xi long chen, FA 1737910 (Forum Aug. 4, 2017). Respondent thus appears to have not made demonstrable preparations to use the disputed domain names since their registration. Therefore, the Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that because Respondent’s disputed domain names’ resolving webpages are inactive, Respondent acted in bad faith. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant has been using its WAHL mark for more than 100 years. As a result of Complainant’s extensive investment in the WAHL mark, widespread publicity and recognition of the marks, and sales of the WAHL products under the marks, the WAHL mark had become famous well before Respondent’s registration of the disputed domain names; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Complainant also contends that Respondent registered and is using the disputed domain names in bad faith because Respondent had constructive or actual notice of Complainant’s mark and the disputed domain names do not resolve to active websites. The Panel notes that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to the notoriety of Complainant’s mark and Respondent’s inactive use of the disputed domain names, Respondent had actual knowledge of the rights in Complainant’s mark. The Panel infers, due to the notoriety of Complainant’s mark that Respondent had actual knowledge of Complainant’s rights in the BLINK mark at the time of registering the disputed domain names, and thus finds bad faith registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moreclippers-wahl.me> and <clippers-wahlonline.club> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 14, 2021
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