Wahl Clipper Corporation v. rayan cash / gewcorps.com
Claim Number: FA2006001898556
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is rayan cash / gewcorps.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlcliper.com>, registered with NameCheap, Inc.
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 June 1, 2020; the Forum received payment on June 1, 2020.
On June 2, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <wahlcliper.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2020 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@wahlcliper.com.
Also on June 3, 2020, 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 25, 2020 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 <wahlcliper.com> be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it has rights in the disputed domain name acquired through its ownership of the portfolio of trademark registrations set out below and its long and extensive use of the mark in its hair care products business.
Complainant submits that the disputed domain name is confusingly similar to its WAHL mark because it incorporates Complainant’s mark in its entirety; the only differences between the disputed domain name and Complainant’s WAHL mark is the addition of a misspelling of the generic term “clipper” and the generic top-level domain (gTLD) “.com”; that these slight differences do nothing to distinguish the disputed domain name from Complainant’s mark; and that panels established under the Policy have consistently held that the use of a complainant’s trademark as the sole distinctive portion of a domain name in dispute constitutes a confusingly similar use of complainant’s trademark. See Wahl Clipper Corporation v. Jochen Wahl and Elektro-Wahl GmbH, FA1008001339694 (Forum September 20, 2010) (finding the addition of the descriptive terms “elektro” and “gmbh” do not distinguish the <elektro-wahl- gmbh.com> domain name Complainant’s WAHL mark).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never been known or referred to as WAHL or any variation thereof; Respondent is not affiliated with, licensed or otherwise authorized by Complainant to use the WAHL mark; and Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
Complainant argues that there is no other entity in the hair care industry, apart from Complainant, that is known as Wahl. Further, 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. See Radio Flyer Inc. v Stefan Hansmann / Invertising, FA 1610574 (Forum May 12, 2015) (finding respondent had no rights or legitimate interests where respondent was not commonly known as the disputed domain name).
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 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).
Complainant refers to a screenshot of the website to which the disputed domain name resolves displays several sponsored hyperlinks labeled with the WAHL mark, terms related to Complainant’s Wahl Products (e.g. “professional clippers,” “shavers,” and “beard shaver”), and a trademark owned by one of Complainant’s competitors. When Internet users click on the hyperlinks displayed on Respondent’s website, they are directed to websites that display links to additional sponsored links that include links to Complainant’s own websites and third party websites of Complainant’s competitors. Complainant submits that such use is neither a bona fide use of the domain name in relation to the sale of goods or a noncommercial or fair use of the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in bad faith because the disputed domain name is identical and/or confusingly similar to Complainant’s WAHL marks.
Complainant adds that the disputed domain name was registered with actual or constructive knowledge of Complainant’s rights in the WAHL marks which is evidence of bad faith registration. See Samsonite Corp. v. Colony Holding, FA0003000094313 (Forum April 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at time of registration).
Complainant further argues that Respondent is using the disputed domain name to attract Internet users, who may be seeking Complainant’s Wahl websites and diverting them to Respondent’s website for financial gain through the collection of click-through fees generated from redirecting Internet traffic to third-party websites. Complainant submits that such use of the disputed domain name indicates Respondent’s bad faith See. Enterprise Holdings, Inc. v. Qian Jihai, FA2002001882533 (Forum May 7, 2020) (finding respondent’s use of disputed domain to attract, for commercial gain, internet users to its website by creating a likelihood of confusion constitutes bad faith registration and use of the domain)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant designs, engineers, manufactures, markets and sells haircare products under family of trademarks that include WAHL and is the owner of the following trademark registrations:
|
Trademark |
Application Number (Application Date) |
Registration Number (Registration Date) |
Classes |
|
|
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 |
Complainant maintains an established Internet presence at is main website at
<www.wahl.com>.
The disputed domain name was registered on February 18, 2020 and resolves to a website with links to Complainant’s and third-party hair care products such as men’s shavers and clippers.
There is no information on the record about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the FORUM for verification of the registration details of the disputed domain name in the course of this proceeding. Respondent, who is the registrant of the disputed domain name has availed of a privacy service to conceal his identity on the published WhoIs.
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 disputed domain name <wahlcliper.com> consists of Complainant’s WAHL mark in its entirety, the element “cliper” and the generic top-level domain (gTLD) “.com” extension.
Complainant’s WAHL mark is the initial, dominant and only distinctive element of the disputed domain name. The element “cliper” has no apparent meaning other than, in the context of this Complaint where it is associated with Complainant’s mark, as a misspelling of the word “clipper”. In any event it adds no distinctive character to the disputed domain name.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, because it is an extension is a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has 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 alleging that Respondent has never been known or referred to as WAHL or any variation thereof; that Respondent is not affiliated with, licensed or otherwise authorized by Complainant to use the WAHL mark; that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services; that there is no other entity in the hair care industry, apart from Complainant, that is known as WAHL; that 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; that Respondent is not associated with Complainant; that 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; that the disputed domain name resolves to a website that displays several sponsored hyperlinks labeled with Complainant’s WAHL mark, terms related to Complainant’s Wahl Products (e.g. “professional clippers,” “shavers,” and “beard shaver”), and a trademark owned by one of Complainant’s competitors; and that such use is neither a bona fide use of the domain name in relation to the sale of goods nor a noncommercial or fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities 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).
Complainant alleges that Respondent registered the disputed domain name in bad faith because the disputed domain name is identical and/or confusingly similar to Complainant’s WAHL marks.
On the evidence before this Panel, Complainant has used the WAHL mark for many years and has an Internet presence marketing its hair care products. The disputed domain name was recently registered, long after Complainant had first used the WAHL mark and developed its substantial reputation.
In these circumstances it is improbable that the registrant of the disputed domain name was unaware of Complainant, its rights, reputation and goodwill in the WAHL mark when the disputed domain name was chosen and registered.
Furthermore this Panel finds that, on the balance of probabilities, the registrant chose and registered the disputed domain name, which is a combination of Complainant’s mark and a misspelling of the word “clippers” in order to reference Complainant’s mark and to take predatory advantage of Complainant’s reputation and goodwill.
The record, and in particular the screenshot of the website to which the disputed domain name resolves illustrates that Respondent is using the disputed domain name to attract Internet users and divert them to Respondent’s website which offers links to web locations offering both Complainant’s and third party competing products.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in bad faith in an intentional attempted to attract, for commercial gain, Internet users to his web site by creating an initial interest confusion with Complainant, its mark and its website in order to divert traffic to third party competing websites for commercial gain.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahlcliper.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________
James Bridgeman SC
Panelist
Dated: June 26, 2020
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