Wahl Clipper Corporation v. Siwaphong Kiattalearngrit
Claim Number: FA1108001403471
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Siwaphong Kiattalearngrit (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahlhairclippers.us>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2011; the Forum received a hard copy of the Complaint on August 24, 2011.
On August 16, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <wahlhairclippers.us> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third-parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 29, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 makes the following assertions:
Complainant uses the WAHL mark to market hair clippers throughout the world.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WAHL mark, including Reg. No. 1,372,190, registered November 26, 1985.
Respondent registered the <wahlhairclippers.us> domain name on July 24, 2011.
The disputed domain name resolves to a website that offers for sale both Complainant’s hair clippers and those of its competitors.
Respondent’s <wahlhairclippers.us> domain name is confusingly similar to Complainant’s WAHL mark.
Respondent does not have any rights to or legitimate interests in the domain name <wahlhairclippers.us>.
Respondent both registered and uses the <wahlhairclippers.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by the Respondent is confusingly similar to a trademark in which the Complainant has rights; and
(2) the Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in its WAHL mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.
See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.
See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO).
This is true even though Respondent resides or operates in a jurisdiction other than that in which Complainant’s rights in its mark were established. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <wahlhairclippers.us> domain name combines Complainant’s WAHL mark with the terms “hair” and “clippers,” which describe Complainant’s business, and with the country-code top-level domain (“ccTLD”) “.us.” Because these alterations of the mark in forming the contested domain name do not distinguish the domain from the mark, we conclude that Respondent’s <wahlhairclippers.us> domain name is confusingly similar to Complainant’s WAHL mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbat-teries.com> from a complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus [UDRP] ¶ 4(a)(i) is satisfied); further see Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <wahlhairclippers.us> domain name. Under Policy ¶ 4(a)(ii), once Complainant has established a prima facie showing on this element of its case, the burden shifts to Respondent to prove that it does have such rights or legitimate interests. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].
Complainant has made out a sufficient prima facie case under this head of the Policy. Respondent’s failure to respond to the Complaint therefore allows us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004), finding that because a respondent failed to submit a response to a UDRP complaint:
Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that there is no evidence in the record which would permit us to conclude that Respondent owns a mark associated with the contested <wahlhairclippers.us> domain name, or that Complainant has authorized Respondent to use its WAHL mark in a domain name, or that Respondent has been commonly known by that domain name. Moreover, the WHOIS information for the disputed domain identifies the registrant only as “Siwaphong Kiattalearngrit,” which does not resemble the domain. On this record, we conclude that Respondent is not commonly known by the <wahlhairclippers.us> domain name and so has no rights to or legitimate interests in that domain as contemplated in Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s <wahlhairclippers.us> domain name resolves to a website that sells Complainant’s hair clipper products, as well as those of Complainant’s commercial competitors. This competing use of a domain name which is confusingly similar to Complainant’s WAHL mark is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use of the domain pursuant to Policy ¶ 4(c)(iv). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that the unauthorized use of a complainant’s mark to sell that complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of its commercial competitors).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <wahlhairclippers.us> domain name resolves to a website selling the products of Complainant’s competitors. Such a use disrupts Complainant’s business and thus stands as evidence of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name to a complainant from a respondent a watch dealer not authorized to sell that complainant’s goods,); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002):
Unauthorized use of Complainant’s … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
Moreover, it is evident from the record that Respondent’s use of a domain name which is confusingly similar to Complainant’s WAHL mark is an attempt to confuse Internet users by selling hair clipper products in competition with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from this deliberate confusion. This is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell the products of a complainant without permission and to mislead Internet users by implying that that respondent was affiliated with a complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <wahlhairclippers.us> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 4, 2011
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