Wahl Clipper Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2012001924537
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlclippercorp.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2020; the Forum received payment on December 10, 2020.
On December 14, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <wahlclippercorp.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 December 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@wahlclippercorp.com. Also on December 15, 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 January 9, 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 rights in the WAHL mark established by its ownership of the portfolio of registered trademarks described below and its long and continuous use of the mark on its haircare products. Complainant presently used the mark on its products marketed in 165 countries worldwide including the United States through retail stores, online retailers and Complainant’s many websites, which include <www.wahl.com>.
The disputed domain name incorporates Complainant’s famous WAHL mark in its entirety. The only differences between the disputed domain name and Complainant’s WAHL mark is the addition of the generic terms, “clipper,” which is closely associated with Complainant its haircare products, the generic term “corp,” and the generic top-level domain (gTLD) <.com>.
Complainant submits that these slight differences do nothing to distinguish the disputed domain name from Complainant’s WAHL mark and argues 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. Citing for example Wahl Clipper Corporation v. Jochen Wahl and Elektro-Wahl GmbH, FA1008001339694 (Forum Sept. 20, 2010) (finding the addition of the descriptive terms “elektro” and “gmbh” do not distinguish the <elektro-wahlgmbh.com> domain name from Complainant’s WAHL mark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never been known by, or referred to, as WAHL or any variation thereof. 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).
Complainant asserts that Respondent is not affiliated with, licensed or otherwise authorized by Complainant to use the WAHL mark, and has not used the disputed domain name in connection with a bona fide offering of goods or services. 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 also submits that the disputed domain name was registered more than 100 years after Complainant’s first use of the WAHL mark and more than 69 years after Complainant first obtained a registration for the mark, Thus, Respondent has no rights or legitimate interest in the disputed domain name. Citing Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
In addition, it is contended that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use. 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. The screenshot shows that the website displays several sponsored hyperlinks labeled with the WAHL mark; and terms related to Complainant’s WAHL branded products (e.g. “Professional Hari Clipper,” and “Professional Hair Trimmer”).
Complainant submits that 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 the websites of Complainant’s competitors and third-party retail website that offer Complainant’s products for sale. Complainant has adduced in evidence a representative sample of the webpages accessible through the hyperlinks on Respondent’s website.
Complainant submits that such use of Complainant’s WAHL mark in the disputed domain name by Respondent to attract users to Respondent’s website to collect click-through fees that are generated from redirecting Internet traffic to third-party websites, including the websites of complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).Citing Enterprise Holdings, Inc. v. Qian Jihai, FA2002001882533 (Forum May 7, 2020) (finding respondent’s use of the disputed domain to display links to other sites relating complainant’s business does constitute a bona fide offering of goods or services or legitimate non-commercial or fair use).
Complainant submits that Respondent registered the disputed domain name in bad faith. The disputed domain name is identical and/or 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 Respondent is using Complainant’s WAHL mark in an attempt to attract Internet users to Respondent’s website for its own financial gain.
When Respondent registered the disputed domain name in 2020, Complainant had already been using its WAHL mark for more than 100 years and owned at least eight (8) United States federal registrations for Complainant’s WAHL Marks (one of which had been registered for more than 69 years). Additionally, as a result of Complainant’s extensive investment the WAHL mark has achieved widespread publicity and recognition. This evidence strongly indicates that Respondent had constructive, if not actual, notice of Complainant’s rights to the famous WAHL Marks prior to registering the disputed domain name. In addition, given that the sponsored links displayed on Respondent’s website (see Exhibit F) display Complainant’s WAHL mark and reference products offered by Complainant, it is clear that Respondent was aware of Complainant, the WAHL Marks, and Complainant’s Wahl Products prior to registering and using the disputed domain name.
Complainant argues that it is clear that Respondent registered the disputed domain name primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and thereby disrupting Complainant’s business which constitutes bad faith registration and use of the disputed domain name under Policy 4(b)(iii). See EthnicGrocer.com v. Latin Grocer.com, FA0003000094384 (Forum July 7, 2000) (registration of slight variation of Complainant’s mark suggests Respondent registered names primarily for the purpose of disrupting Complainant’s business).
Complainant adds that by using the disputed domain name that is confusingly similar to Complainant’s registered WAHL mark, Respondent clearly intends to attract Internet users to its Respondent’s website by creating a likelihood of confusion with Complainant’s WAHL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This constitutes bad faith registration and use under the Policy, paragraph 4(b)(iv).
Respondent’s registration of the disputed domain name with actual or constructive knowledge of Complainant’s rights in the WAHL Marks is evidence that Respondent registered and is using the disputed domain name in bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark).
Prior panel decisions have held that bad faith may be inferred from the registration of a well-known mark. See The Caravan Club v. Mrgsale, FA7000095314 (Forum Aug. 30, 2000) (“Registration of a well known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith.”).
Moreover, Complainant contends that Respondent is using the disputed domain name to attract Internet users, who may be seeking Complainant’s websites, to Respondent’s website for Respondent’s own 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 Wahl Clipper Corporation v. rayan cash / gewcorps.com, FA2006001898556 (Forum June 26, 2020) (finding bad faith where the disputed domain resolved to parked page displaying sponsored hyperlinks labeled with terms related to Complainant’s Wahl Products).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a producer of hair care products and owns and uses the WAHL trademark for which it holds the following trademark registrations:
· United States registered trademark WAHL (figurative), registration number 0539711, registered on the Principal Register on March 20, 1951, for goods in international class 9;
· United States registered trademark WAHL registration number 0674438, registered on the Principal Register on February 24,1959 for goods in international class 4;
· United States registered trademark WAHL (figurative) registration number 0527562, registered on the Principal Register on July 11, 1950 for goods in international class 8;
· United States registered trademark WAHL registration number 1139810, registered on the Principal Register on September 23, 1980, for goods in international class 9;
· United States registered trademark WAHL registration number 1372190, registered on the Principal Register on November 26, 1985 for goods in international classes 8,10 and 21;
· United States registered trademark WAHL registration number 1691191, registered on the Principal Register on June 9, 1992 for goods in international class 8.
· United States registered trademark WAHL registration number 5664317, registered on the Principal Register on January 29, 2019 for goods in international class 8;
· United States registered trademark WAHL registration number 5817161, registered on the Principal Register on July 30, 2019 for goods in international class 3.
The disputed domain name was registered on November 13, 2020 and resolves to a website that displays links to third party website that contains onwards links to Complainant’s competitors and competing products.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name.
Respondent 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”).
Complainant has adduced clear, convincing and uncontested evidence of its rights in the WAHL mark established by its abovementioned trademark registration and the goodwill established by its use of the mark on its WAHL-branded products in retail stores 165 countries worldwide, online retailers, and Complainant’s own website at <www.wahl.com>.
The disputed domain name consists of Complainant’s WAHL mark in its entirety in combination with the terms, “clipper” and “corp,” and the generic Top-Level Domain (gTLD) <.com> extension.
Complainant’s WAHL mark is the initial, dominant and only distinctive element in the disputed domain name. The term, “clipper,” which is closely associated with haircare products, the generic term “corp,” do not add any distinctive character to the disputed domain name, nor does the gTLD <.com> extension which, in the circumstances of this case be considered as a necessary technical element of a domain name.
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 establishing 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
· Respondent has never been known or referred to as WAHL or any variation thereof;
· there is no other entity in the hair care industry, apart from Complainant, that is known as WAHL;
· 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 is Respondent’s legal name;
· Respondent is not affiliated with, licensed or otherwise authorized by Complainant to use the WAHL mark;
· Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
· Respondent registered the disputed domain name more than 100 years after Complainant first used the WAHL mark and more than 69 years after Complainant first obtained a registration for the WAHL mark;
· the screenshots that have been adduced in evidence, show that Respondent uses Complainant’s WAHL mark in the disputed domain name to attract users to Respondent’s website to collect click-through fees that are generated from redirecting Internet traffic to third-party websites, including the websites of Complainant’s competitors; and
· such use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights to legitimate interests in a disputed domain name the burden of production shifts to the respondent to show such rights. Respondent has failed to respond to this Complaint and is therefore failed to discharge the burden of production. This Panel must find therefore that Respondent has no right to legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii)
When the disputed domain name was registered in 2020, Complainant had already been using its WAHL mark for more than 100 years, owned at least eight United States federal registrations for the WAHL marks (one of which had been registered for more than 69 years and developed a significant world-wide reputation and goodwill for its mark and haircare products.
Complainant’s WAHL mark is the dominant element of the disputed domain name which also contains the descriptive term “clipper” which is a reference to hair care products, this Panel finds that on the balance of probabilities that the disputed domain name was chosen and registered in bad faith to target and take predatory advantage of Complainant, its name, mark, reputation and goodwill.
Furthermore, the uncontested evidence is that Respondent is using the disputed domain name in bad faith to divert Internet traffic to Respondent’s website that provides links directing Internet users to third party websites promoting competing products.
As this Panel has found that the disputed domain name has been both registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application in this proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahlclippercorp.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: January 11, 2021
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