Wahl Clipper Corporation v. Eugene Preston
Claim Number: FA2103001935868
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Eugene Preston (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2021; the Forum received payment on March 9, 2021.
On March 10, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names are registered with Dynadot, LLC and that Respondent is the current registrant of the names. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@wahlclippersal.online, postmaster@wahlclippersdc.store, postmaster@wahlclippersny.online, postmaster@wahlclippersny.store. Also on March 11, 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. For over 100 years, since at least as early as 1919, Complainant has been continuously and extensively engaged in the business of marketing and selling hair care products, including electric hair clippers, electric hair trimmers, electric hair shavers, hair care products, (shampoos, styling products, etc.), and other related goods and accessories for consumer home use, professional use, and animal use including retail, groomers, and veterinarians.
2. Complainant has rights in the WAHL mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 674,438, registered February 24, 1959). Respondent’s <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store>[i] domain names are confusingly similar to Complainant’s marks as they each incorporate Complainant’s WAHL mark its entirety in their entirety and merely attach the generic term “clippers,”, two additional generic letters (“AL,” “DC,” and “NY”), and either the generic top-level domain (“gTLD”) “.online” or “.store”.
3. Respondent lacks rights or legitimate interests in the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names. Respondent is not commonly known by the domain names nor has Respondent been authorized by Complainant to use the WAHL mark.
4. Respondent has not used the domain names in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent fails to make use of the domain names.
5. Respondent registered and uses the domain names in bad faith. Respondent uses the domain names to disrupt Complainant’s business.
6. Additionally, Respondent registered the domain names domain name with actual knowledge of Complainant’s rights in the WAHL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WAHL mark. Respondent’s domain name is confusingly similar to Complainant’s WAHL mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names and that Respondent registered and uses the domain names 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 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 rights in the WAHL mark through Complainant’s registration of the marks with the USPTO (e.g. Reg. No. 674,438, registered February 24, 1959). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, Complainant has demonstrated rights in the WAHL mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names are confusingly similar to Complainant’s mark as all incorporate Complainant’s WAHL mark in its entirety and merely add the generic term “clippers,” two additional generic letters (“AL,” “DC,” and “NY”), and either the gTLD “.online” or “.store. The addition of a generic terms, generic letters and/or a gTLD fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain names] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain names and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names as Respondent is not commonly known by the domain name nor has Respondent been given license or consent to use the WAHL mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names lists the registrant as “Eugene Preston” and there is no other evidence to suggest that Respondent was authorized to use the WAHL mark or was commonly known by the domain names. Therefore, the Respondent is not commonly known by the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not used the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use as Respondent fails to make use of the domain names. Failure of a domain name incorporating the mark of another to resolve to an active webpage is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant has provided the Panel with a screenshot of Respondent’s <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names resolving webpages that all shows blank pages with Chinese characters. Therefore, the Panel holds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent registered the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names in bad faith as Respondent uses the domain names to disrupt Complainant’s business. Using confusingly similar domain names to disrupt a Complainant’s business may be bad faith per Policy ¶ 4(b)(iii). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)). See also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). The Complainant argues, without contradiction, that due to the confusing similarity of the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names to the Complainant’s WAHL mark it is clear the Respondent registered the domain names with the intention of disrupting Complainant’s business and diverting internet users. The Panel agrees, and holds that Respondent registered and uses the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names in bad faith per Policy ¶ 4(b)(iii).
Complainant also contends Respondent registered and used the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names with actual knowledge of Complainant’s rights in the WAHL mark due to the prominence of the mark and that Respondent included the term “CLIPPERS,” in all of the domain names, which relates to the specific industry in which the Complainant operates. Respondent’s registration of confusingly similar domain names to the well-known WAHL mark as well as Respondent’s complete incorporation of the Complainant’s mark into the domain names demonstrates Respondent’s actual knowledge of Complainant’s rights to the mark per Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain names in bad faith). See also Goepfert v. Rogers, FA 861124 (Forum Jan. 17, 2007) (“The common usage of the terms “sentiment” and “trader” in the financial services industry further support [the] respondent’s claim that he did not deliberately register the disputed domain name in bad faith.”). Because the Panel agrees, the Panel finds Respondent registered and uses the <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 15, 2021
[i] The <wahlclippersal.online>, <wahlclippersdc.store>, <wahlclippersny.online>, and <wahlclippersny.store> domain names were all registered on February 1, 2021.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page