Wahl Clipper Corporation v. Eugene Preston
Claim Number: FA2102001932886
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Eugene Preston (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlclippers.store>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2021; the Forum received payment on February 19, 2021.
On February 21, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <wahlclippers.store> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. 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 February 24, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@wahlclippers.store. Also on February 24, 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 March 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims its rights in the WAHL mark acquired through its portfolio of trademark registrations described below and at common law through its claimed continuous use of the mark for over a century, in the business of marketing and selling hair care products including electric hair clippers, electric hair trimmers, electric hair shavers, shampoos, styling products and related goods and services since at least as early as 1919.
Complainant submits that its rights in the WAHL mark have previously been recognized in several successful UDRP proceedings including the following: Wahl Clipper Corporation v. Jochen Wahl and Elektro-Wahl GmbH, FA1008001339694 (Forum September 20, 2010) (transferring <elektro-wahl-gmbh.com> ); Wahl Clipper Corporation v. Ben Quadrus / Quadrus LTD, FA1012001364250 (Forum January 31, 2011) (transferring <w-a-h-l.info>); Wahl Clipper Corporation v. rayan cash / gewcorps.com, FA2006001898556 (Forum June 26, 2020) (transferring <wahlcliper.com>); Wahl Clipper Corporation v. Domain Admin / Whois Privacy Corp., FA2007001903584 (Forum August 8, 2020) (transferring <wahlsclipper.com>); Wahl Clipper Corporation v. Irfan Razaq / ParkBy Ltd., FA2007001905938 (Forum August 20, 2020) (transferring <wahlclipperparts.com> ); Wahl Clipper Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2012001924537 (Forum January 11, 2021) (transferring <wahlclippercorp.com> ); and Wahl Clipper Corporation v. Domain Administrator / Fundacion Privacy Services LTD, FA2012001925692 (Forum February 1, 2021) (transferring <wahlcorp.com>).
Complainant argues that the disputed domain name is confusingly similar to its WAHL trademark as it incorporates the mark in its entirety, with the only differences being the addition of the generic term “clippers,” a term that is closely associated with Complainant and its WAHL branded products, and the generic top-level domain (gTLD) <.store>.
Complainant submits that neither the additional element “clippers” nor the gTLD extension in any way distinguish the disputed domain name from Complainant’s WAHL mark. Complainant submits that previous panels established under the Policy have consistently held that the use of Complainant’s trademark as the sole distinctive portion of a domain name in dispute creates a confusing similarity. Citing: Wahl Clipper Corporation v. rayan cash / gewcorps.com, FA2006001898556 (Forum June 26, 2020) (transferring the <wahlcliper.com> domain).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that there is no other entity in the worldwide hair care industry, apart from Complainant, that is known as “Wahl”, and in particular there is no indication that Respondent or any business or other organization owned or controlled by Respondent has ever been commonly known by or referred to as the disputed domain name or that the disputed domain name is Respondent’s legal name. Citing Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
Furthermore, Complainant asserts that Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the WAHL mark, which demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant adds that its trademark rights in WAHL predate the registration of the disputed domain name.
Complainant refers to a screenshot of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint and submits that the image illustrates that the disputed domain name is being used as the address of a website that constitutes a clear attempt to impersonate one of Complainant’s official WAHL websites. Complainant adds that the screenshot shows that Respondent’s website reproduces the entire look and feel of Complainant’s WAHL websites, by at least the following: (1) prominently displaying the WAHL logo; (2) copying the color scheme and layout used on the WAHL websites and WAHL branded products; and (3) displaying Complainant’s copyrighted photos of its WAHL products, related narrative text, product packaging, and other design elements directly copied from Complainant’s websites. Complainant contends that such use is not a bona fide offering of goods or services.
Complainant furthermore alleges that the disputed domain name was registered and is being used in bad faith because it is confusingly similar to Complainant’s famous WAHL mark; Respondent had constructive or actual notice of Complainant’s rights to the WAHL mark prior to registering the disputed domain name; and the disputed domain name does not resolve to any active website.
Complainant reasserts that it had established prior rights to the WAHL mark by use in trade more than 100 years ago and its first trademark registration pre-dates the registration of the disputed domain name by more than 69 years.
Complainant alleges that the screenshot of the website to which the disputed domain name resolves illustrates that Respondent is using the disputed domain name in bad faith, to lure Internet consumers to Respondent’s website to intentionally perpetrate a fraudulent scheme to steal consumers’ personal information, including their credit card numbers and related billing information. Specifically, it is alleged that Respondent’s website purports to offer WAHL-branded products for sale at vastly discounted prices, which Complainant has not authorized, and would never authorize.
Additionally, Complainant submits that the wholesale copying of content on its WAHL websites and unauthorized use of the WAHL marks on Respondent’s website creates a false impression causing Internet users searching for Complainant’s official WAHL websites to mistakenly believe that Respondent’s website is affiliated with or hosted, sponsored, or authorized by Complainant, when that is not the case. Complainant submits that Respondent is therefore using the disputed domain name as a website address designed to intentionally deceive Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
|
Trademark |
Application Number (Application Date) |
Registration Number (Registration Date) |
Classes |
|
[IMAGE OMITTED OF WAHL TRADEMARK] |
71594161 (March 17, 1950) |
0539711 (March 20, 1951) |
Class 9 |
|
WAHL |
72047479 (March 10, 1958) |
0674438 (February 24, 1959) |
Class 4 |
|
WAHL |
73136220 (August 1, 1977) |
1139810 (September 23, 1980) |
Class 9: |
|
WAHL |
73518739 (January 23, 1985) |
1372190 (November 26, 1985) |
Classes 8, 10, 21 |
|
WAHL |
74082971 (July 30, 1990) |
1691191 (June 9, 1992) |
Class 8 |
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 provided clear, convincing and uncontested evidence of its rights in the WAHL mark acquired through its portfolio of trademark registrations above at common law through the goodwill established by the continuous use of the mark in the business of marketing and selling hair care products for over a century.
The disputed domain name consists of Complainant’s WAHL mark, the word “clippers” the gTLD <.store> extension.
Complainant’s mark is the initial, dominant, and only distinctive element of the disputed domain name.
The word “clippers” adds no distinguishing character and in context it would be taken to refer to hair-clippers which are identified with Complainant.
In the context of this Complaint, the gTLD extension <.store> adds no distinguishing character and would be regarded as a necessary technical element for a domain name. The particular gTLD <.store> may also infer a generic commercial refence.
This Panel finds therefore that the disputed domain name is confusingly similar to the WAHL mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, submitting that
· there is no other entity in the worldwide hair care industry, apart from Complainant, that is known as “Wahl”;
· Respondent is not associated with Complainant and Complainant has not licensed or otherwise authorized Respondent’s use of the WAHL mark, which demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name;
· Complainant’s trademark rights predate the registration of the disputed domain name;
· the screenshot of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint illustrates that the disputed domain name is being used as the address of a website that constitutes a clear attempt to impersonate one of Complainant’s official WAHL websites as it has the look and feel of Complainant’s site, prominently displaying the WAHL logo, copying the color scheme and layout used on the WAHL websites and WAHL branded products and displaying Complainant’s copyrighted photos of its WAHL products, related narrative text, product packaging, and other design elements directly copied from Complainant’s websites. Complainant submits that such use is not a with a bona fide offering of goods or services.
For completeness it might be added that there is no indication on the record to show that Respondent is a bona fide reseller of Complainant’s goods. There is nothing on Respondent’s website to indicate that Respondent is not affiliated with Complainant; and the content and presentation of the website, including the extensive use of Complainant’s WAHL trademark, creates the impression that it is hosted by Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove the existence of such rights or interests. Respondent has failed to discharge the burden of production.
Therefore, this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name consists of Complainant’s mark in combination with the word “clippers” being a reference to the goods sold by Complainant.
Complainant has established prior rights to the WAHL mark by use in trade over more than a century and owned trademark rights in the WAHL mark for more than 69 years. It is most improbable that the disputed domain name was chosen and registered for any purpose other than to target and take predatory advantage of Complainant, its name, mark, reputation, and goodwill. It was therefore registered in bad faith. This finding is supported by the fact that the disputed domain name has been used as the address of a website that purports to present Complainant’s goods for sale at discounted prices.
While Respondent’s use of the domain name as a website address lacks bona fides, Complainant has not provided any evidence to support its allegations that the website is being used to defraud visitors. Also, Complainant’s contention that the disputed domain name does not resolve to any active website is inconsistent with the evidence adduced and the arguments advanced by Complainant.
Nonetheless, it is clear that the disputed domain name is being used in bad faith to impersonate Complainant, lure and misdirect consumers away from Complainant’s website, by creating a false impression, that Respondent’s website is affiliated with or hosted, sponsored, or authorized by Complainant, when that is not the case. Additionally, the extensive unauthorized use of Complainant’s WAHL mark and copyright content on Respondent’s website amounts to bad faith ruse for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahlclippers.store> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 19, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page