Wahl Clipper Corporation v. Jenny Huang
Claim Number: FA2307002053452
Complainant is Wahl Clipper Corporation ("Complainant"), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Jenny Huang ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlclipperxvmlyr.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on July 17, 2023; Forum received payment on July 17, 2023.
On July 18, 2023, GoDaddy.com, LLC confirmed by email to Forum that the <wahlclipperxvmlyr.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 July 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2023 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 postmaster@wahlclipperxvmlyr.com. Also on July 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On August 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 has marketed and sold hair care products under the WAHL mark for more than 100 years. Complainant's products include electric hair clippers. They are sold throughout the United States and in 165 countries worldwide. Complainant also markets and sells its products via its own websites, including a website at <wahlclipper.com>. Complainant owns longstanding United States trademark registrations for WAHL in both standard character and design form and also asserts common law rights in the mark. Complainant claims that the WAHL mark has become famous as a result of longstanding and extensive use and promotion.
The disputed domain name <wahlclipperxvmlyr.com> was registered in September 2022. The name is registered in the name of a privacy registration service on behalf of Respondent. The domain name resolves to a blank page. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and is not licensed or otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <wahlclipperxvmlyr.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.
B. Respondent
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 disputed domain name <wahlclipperxvmlyr.com> incorporates Complainant's registered WAHL trademark, adding the generic term "clipper" and the characters "XVMLYR," and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Wahl Clipper Corp. v. Theresa W Chavez female, FA 1973154 (Forum Dec. 14, 2021) (finding <moreclippers-wahl.me> and <clippers-wahlonline.club> confusingly similar to WAHL); Wahl Clipper Corp. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1924537 (Forum Jan. 11, 2021) (finding <wahlclippercorp.com> confusingly similar to WAHL). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.12 (where complainant's trademark is recognizable within domain name, addition of other third-party marks does not preclude finding of confusing similarity to complainant's mark). 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. Respondent does not appear to have made any active use of the domain name, nor to have engaged in substantial preparations for such use, suggesting that Respondent lacks rights or interests in respect of the disputed domain name. See, e.g., Wahl Clipper Corp. v. Theresa W Chavez female, supra (finding lack of rights or interests in similar circumstances); Victoria's Secret Stores Brand Management, Inc. v. Loh Weng Kong, FA 1435911 (Forum Apr. 26, 2012) (same). The Panel speculates that the domain may have registered as part of a strategy to promote marketing services to Complainant on behalf of VMLY&R (which appears to maintain an office at the address provided by Respondent) or some other entity, although there is insufficient evidence in the record to support such an inference.
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 used a privacy registration service to register a domain name incorporating Complainant's well-known mark. Respondent does not appear to have made any active use of the name and has failed to come forward with any explanation for the selection or intended use of the domain name. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant and its mark, and is maintaining the domain name for that purpose. See, e.g., Enterprise Holdings, Inc. v. Patricia Lupori / Enterprise Car Rental (Airport), FA 2052270 (finding bad faith registration and use in similar circumstances); Wahl Clipper Corp. v. Theresa W Chavez female, supra (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 <wahlclipperxvmlyr.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 10, 2023
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