Wahl Clipper Corporation v. Xiao Gong He / Jiang Xi Huo Bao Wang Lao Ke Ji You Xian Gong Si
Claim Number: FA2104001941552
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Xiao Gong He / Jiang Xi Huo Bao Wang Lao Ke Ji You Xian Gong Si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlelectricclippers.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2021; the Forum received payment on April 14, 2021.
On April 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wahlelectricclippers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 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@wahlelectricclippers.com. Also on April 16, 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 May 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is seller of hair care products including electric hair clippers, electric hair trimmers, electric hair shavers, hair care products, and other related goods and accessories. Complainant has rights in the WAHL trademark through registration with the United States Patent and Trademark Office (e.g. Reg. No. 674,438, registered Feb. 24, 1959). The disputed domain name <wahlelectricclippers.com> is identical or confusingly similar because it wholly incorporates Complainant’s WAHL trademark while adding the terms “electric” and “clippers” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <wahlelectricclippers.com> domain name because Respondent is not commonly known by the <wahlelectricclippers.com> nor has Respondent received authorization from Complainant to use Complainant’s WAHL trademark. Respondent is not using the <wahlelectricclippers.com> domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use, because Respondent appears to be passing off as Complainant and selling Complainant’s products without authorization.
Respondent registered and uses the <wahlelectricclippers.com> domain name in bad faith because Respondent uses the <wahlelectricclippers.com> domain name to divert users away from Complainant’s business by giving the appearance of sponsorship and affiliation with the <wahlelectricclippers.com> domain name. Respondent further uses the <wahlelectricclippers.com> domain name in bad faith by attempting to pass off as Complainant. Respondent also acted with actual knowledge of Complainant’s rights in its WAHL trademark when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 527,562 WAHL (logo), registered July 11, 1950 for goods in class 8;
No. 539,711 WAHL (logo), registered March 20, 1951 for goods in classes 10 and 11;
No. 674,438 WAHL (logo), registered February 24, 1959 for goods in class 4;
No. 1,139,810 WAHL (word), registered September 23, 1980 for goods in class 9;
No. 1,372,190 WAHL (word), registered November 26, 1985 for goods in classes 8, 10 and 21;
No. 1,691,191 WAHL (word), registered June 9, 1992 for goods in classes 8, 10 and 20;
No. 4,140,409 WAHL LITHIUM ION (word), registered May 8, 2012 for goods in class 8;
No. 4,506,304 WAHL V9000 (word), registered April 1, 2014 for goods in class 8;
No. 4,529,140 WAHL PRO ION (word), registered May 13, 2014 for goods in class 8;
No. 4,534,925 WAHL #1 (word), registered May 20, 2014 for goods in class 8;
No. 5,664,317 WAHL PROFESSIONAL (word), registered January 29, 2019 for goods in class 8;
No. 5,817,161 WAHL (word), registered July 30, 2019 for goods in class 3; and
No. 5,985,197 WAHL (word), registered February 11, 2020 for goods in class 21.
The disputed domain name <wahlelectricclippers.com> was registered on March 11, 2021.
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”).
The Complainant claims rights in the WAHL trademark based upon its registration with the USPTO (e.g., Reg. No. 1,139,810, registered on Sep. 23, 1980). Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the WAHL trademark per Policy ¶ 4(a)(i).
Complainant argues that the <wahlelectricclippers.com> domain name is identical or confusingly similar to the WAHL trademark because it wholly incorporates the trademark while adding two words and the “.com” gTLD to form a domain name. A domain name may be found to be cofusingly similar, under Policy ¶ 4(a)(i), if it wholly incorporates a complainant’s trademark despite the addition of other words to the trademark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). In this case, the two words added are “electric” and “clippers”. If considered, these descriptive words rather add to the confusing similarity, as they are identifying and relating to the goods sold by the Complainant under the trademark WAHL. Therefore, the Panel finds that the disputed domain name is indeed confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have any rights or legitimate interests in the <wahlelectricclippers.com> domain name because respondent is not commonly known by the disputed domain name. A respondent may be found to not be commonly known by a domain name, under Policy ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to the domain name and where respondent has not received authorization to use a complainant’s mark. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). See also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). The WHOIS information lists the registrant name as “Jiang Xi Huo Bao Wang Lao Ke Ji You Xian Gong Si”. Nothing else in the record suggests that Respondent is known by the <wahlelectricclippers.com> domain name. Further, Complainant repeatedly asserts that it has not given Respondent authorization to use Complainant’s WAHL trademark. Therefore, the Panel finds that Respondent is not commonly known by the <wahlelectricclippers.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the <wahlelectricclippers.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the domain name to pass off as Complainant by selling Complainant’s products. A domain name is not being used in connection with at a bona fide offering of goods or services nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii), where a respondent replicates a website of a complainant and displays complainant’s products. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). The resolving website at the disputed domain prominently features Complainants products and other marks, such as logos, on the resolving website. Complainant states that this causes confusion to consumers thinking that they stumbled on Complainant’s website. Therefore, the Panel finds that Respondent is not using the <wahlelectricclippers.com> domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered or uses the <wahlelectricclippers.com> domain name in bad faith because Respondent used a confusingly similar domain name to attract users for commercial gain. Bad faith may be found under Policy ¶ 4(b)(iv) where a respondent uses a domain name whose resolving website mimics Complainant’s own website in order to confuse users into believing an affiliation between Respondent’s website and Complainant. See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, when users use the <wahlelectricclippers.com> domain name, the resolving website features Complainant’s WAHL trademark, Complainant’s other trademarks and logos, and images of Complainant’s products. Complainant claims that such use may confuse users into believing some affiliation exists between Complainant and the disputed domain name. The Panel agrees with Complainant’s conclusion, and finds that Respondent is using the <wahlelectricclippers.com> domain name to pass off as Complainant under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent acted with actual knowledge of Complainant’s rights it its WAHL trademark. Actual knowledge of a complainant’s rights in a trademark evidences bad faith per Policy ¶ 4(a)(iii) and may be found through the notoriety of the trademark and a respondent’s use of that trademark. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). In the present case, Complainant notes that it is a top brand of hair care products such as electric clippers and that Respondent has used Complainant’s trademark in connection with the sale of Complainant’s products at the resolving website. Therefore, the Panel finds that Respondent acted with actual knowledge of Complainant’s rights in the WAHL trademark, thus acting in bad faith per 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 <wahlelectricclippers.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 21, 2021
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