Wahl Clipper Corporation v. Ya Lei Zhu
Claim Number: FA2102001932888
Complainant is Wahl Clipper Corporation ("Complainant"), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Ya Lei Zhu ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahloulet.com>, registered with Cloud Yuqu 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.
David E. Sorkin 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, Cloud Yuqu LLC confirmed by email to the Forum that the <wahloulet.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com. Also on February 24, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 17, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant has marketed and sold hair care products under the WAHL mark for more than 100 years. Complainant's products are sold throughout the United States and in 165 countries worldwide. Complainant owns longstanding United States trademark registrations for WAHL in both standard character and design form, and claims that the mark is famous.
Respondent registered the disputed domain name <wahloulet.com> in December 2020. The domain name is being used for a website that displays the WAHL mark, uses the same color scheme and layout as that used on Complainant's own websites, and displays text and images copied from Complainant's websites, purporting to offer WAHL-branded products for sale at discounted prices. Complainant characterizes Respondent's website as an attempt to impersonate one of Complainant's websites in order to deceive Internet users, and alleges that Respondent is perpetrating a fraudulent scheme to obtain personal information from consumers. Complainant states that Respondent is not associated with Complainant and has not been licensed or otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <wahloulet.com> is confusingly similar to its WAHL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting inter alia that the disputed domain name is being used for an website that is entirely in English and that attempts to impersonate one of Complainant's official websites. The Panel notes also that the domain name combines the name of a company based in the United States with an English-language word; that the Written Notice of the Complaint was served upon Respondent in both English and Chinese, and Respondent has made no objection to Complainant's request that the proceeding be conducted in English; and that Respondent has been a party to (and declined to participate in) at least one previous proceeding under the Policy, see Spike's Holding, LLC v. Ya Lei Zhu, FA 1926021 (Forum Feb. 1, 2021).
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See Transamerica Corp. v. Zhichao Yang, FA 1932605 (Forum Mar. 17, 2021) (deciding to conduct proceeding in English in similar circumstances); Spike's Holding, LLC v. Ya Lei Zhu, supra (same). The Panel decides that English shall be the language of this proceeding.
The disputed domain name <wahloulet.com> incorporates Complainant's registered WAHL trademark, adding the generic term "outlet" (with a letter omitted) and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Wahl Clipper Corp. v. Rayan Cash / gewcorps.com, FA 1898556 (Forum June 26, 2020) (finding <wahlcliper.com> confusingly similar to WAHL); Sears Brands, LLC v Zhichao Yang, FA 1488276 (Forum Apr. 8, 2013) (finding <searoulet.com> confusingly similar to SEARS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a commercial website that passes off as Complainant, using Complainant's mark and content copied from Complainant's websites to create the false appearance of a connection to Complainant, and purporting to offer what appear to be Complainant's products for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Dell Inc. v. Liu Ying Jun, FA 1928280 (Forum Feb. 15, 2021) (finding lack of rights or interests in similar circumstances); Spike's Holding, LLC v. Ya Lei Zhu, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark and is using it to pass off as Complainant, promoting unauthorized and possibly counterfeit products for sale in a manner clearly designed to create the false impression of association or affiliation with Complainant, and possibly phishing for personal information. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Dell Inc. v. Domain Admin / Whois Privacy Corp., supra (finding bad faith in similar circumstances); Spike's Holding, LLC v. Ya Lei Zhu, supra (same); Beauty Holding, LLC v. Benjamin Wilde, FA 1925183 (Forum Jan. 18, 2021) (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahloulet.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 18, 2021
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