Wahl Clipper Corporation v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2206001998711
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 <wahlproservicewahlclipper.com>, registered with Media Elite Holdings Limited.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2022; the Forum received payment on June 1, 2022.
On June 1, 2022, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <wahlproservicewahlclipper.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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2022, 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@wahlproservicewahlclipper.com. Also on June 2, 2022, 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 June 27, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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, offers hair care products and clippers for consumer home use, professional use, and animal use. Complainant claims rights in the famous WAHL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 527,562, registered July 11, 1950).. Respondent’s <wahlproservicewahlclipper.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the WAHL mark twice in its entirety, along with the generic terms “PRO”, “SERVICE”, and “CLIPPERS”, and the “.com” generic top-level domain name (“gTLD”) to form the disputed domain name.
Respondent lacks rights and legitimate interests in the <wahlproservicewahlclipper.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its WAHL mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent used the disputed domain name to display hyperlinks to third-party competitors of Complainant.
Respondent registered and uses the <wahlproservicewahlclipper.com> domain name in bad faith. First, Respondent uses the confusingly similar domain name to attract Internet users to the domain name’s resolving website for commercial gain. Additionally, Respondent uses the disputed domain name to display competing hyperlinks, disrupting Complainant’s business. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the WAHL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <wahlproservicewahlclipper.com> domain name.
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 claims rights in the WAHL mark through its registration with the USPTO (e.g., Reg. No. 527,562, registered July 11, 1950). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the WAHL mark under Policy ¶ 4(a)(i) based on its registration with the USPTO.
Complainant argues that Respondent’s <wahlproservicewahlclipper.com> domain name is identical or confusingly similar to Complainant’s WAHL mark. Under Policy ¶ 4(a)(i), incorporating a mark in its entity in a disputed domain name with the addition of generic terms is insufficient in demonstrating rights in a mark. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Further, the addition of the gTLD “.com” does not adequately differentiate a disputed domain name from a protected mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The <wahlproservicewahlclipper.com> domain name incorporates the WAHL mark twice in its entirety, along with the generic terms “PRO”, “SERVICE”, and “CLIPPERS”, and the “.com” gTLD to form the disputed domain name. The Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
Rights or Legitimate Interests
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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <wahlproservicewahlclipper.com> domain name because Respondent is not commonly known by the disputed domain name, Complainant’s prior rights in the mark precede Respondents registration, and Complainant has not authorized or licensed to Respondent any rights in the WAHL mark. Without evidence to the contrary, use of a privacy service in WHOIS information supports a finding that a respondent is not commonly known by a disputed domain name pursuant to Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Information on the record that reveals that a registrant’s name is materially different from the disputed domain name may be used to determine that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent used a privacy service to shield its identity in the WHOIS information but the registrar revealed the registrant as “Bhawana Chandel.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s WAHL mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <wahlproservicewahlclipper.com> domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use under Policy ¶¶ 4(c)(i) or (iii). A respondent’s use of a disputed domain name to redirect Internet users to a website featuring links to competitive third-party websites does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). Here, Respondent uses Complainant’s WAHL mark in the disputed domain name to attract users to Respondent’s website, redirecting them to third-party websites, including to Complainant’s competitors. The Panel finds that Respondent does not use the <wahlproservicewahlclipper.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends that Respondent registered the <wahlproservicewahlclipper.com> domain name in bad faith because the confusingly similar domain name disrupts Complainant’s business. A respondent’s use of a confusingly similar domain name to deceive Internet users in regard to the source or affiliation of a domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). Here, Respondent uses the confusingly similar nature of the disputed domain to Complainant’s WAHL mark to create a false impression of affiliation with Complainant for commercial gain through displaying hyperlinks. This is evidence that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent uses the <wahlproservicewahlclipper.com> domain name’s resolving webpage to display competing hyperlinks in bad faith under Policy ¶¶ 4 (iv). A respondent’s use of a confusingly similar domain name’s resolving webpage to display competing hyperlinks is indicative of bad faith under Policy ¶¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Respondent uses the <wahlproservicewahlclipper.com> domain name to redirect users to a website that displays hyperlinks to third-party competitors of Complainant. This is evidence that Respondent used the confusingly similar nature of the <wahlproservicewahlclipper.com> domain name to display competing hyperlinks in bad faith under Policy ¶¶ 4(b)(iv).
Complainant further asserts Respondent registered the <wahlproservicewahlclipper.com> domain name with actual knowledge of Complainant’s rights in the WAHL mark. Past panels have found actual notice by looking at the respondent’s use of the mark, as well as the notoriety of the mark. 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”). In this case, Complainant’s mark was famous and widely used prior to Respondent’s registration of the disputed domain name, and Respondent redirects users to competing hyperlinks. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the WAHL mark under Policy ¶ 4(a)(iii) and registered and uses the domain name in bad faith.
Complainant has proved this element.
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 <wahlproservicewahlclipper.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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