Wahl Clipper Corporation v. Gabriella Garlo
Claim Number: FA2107001957588
Complainant is Wahl Clipper Corporation (“Complainant”), represented by Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA. Respondent is Gabriella Garlo (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wahl.dog>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2021; the Forum received payment on July 30, 2021.
On July 30, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <wahl.dog> 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 August 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@wahl.dog. Also on August 3, 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 August 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Wahl Clipper Corporation, is engaged in the business of marketing and selling hair care products and other related foods and accessories. Complainant has rights in the WAHL mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,372,190, Nov. 26, 1985). Respondent’s <wahl.dog> domain name is identical and/or confusingly similar to Complainant’s mark because it incorporates Complainant’s WAHL mark in its entirety, simply adding the “.dog” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <wahl.dog> domain name. Respondent is not licensed or authorized to use Complainant’s WAHL mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect Internet traffic to third-party websites via hyperlinks.
Respondent registered and uses the <wahl.dog> domain name in bad faith. Respondent attracts users to its webpage for financial gain by displaying hyperlinks to related third-party websites. Additionally, Respondent had actual knowledge of Complainant’s rights in the WAHL mark at the time the disputed domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For over 100 years, since at least as early as 1919, Complainant, Wahl Clipper Corporation, has been continuously and extensively engaged in the business of marketing and selling hair care products and other related goods and accessories. Complainant designs, engineers, manufactures, markets and sells the Wahl products under the WAHL mark throughout the United States and in 165 countries worldwide through retail stores and online retailers. Complainant has rights in the WAHL mark based upon the registration with the USPTO (e.g., Reg. No. 1,372,190, Nov. 26, 1985). name is identical and/or confusingly similar to Complainant’s mark.
Respondent registered the <wahl.dog> domain name on May 18, 2021.
Respondent does not have rights or legitimate interests in the <wahl.dog> domain name. Respondent’s resolving website displays several sponsored hyperlinks including links that (1) display the WAHL mark, and (2) display terms related to Complainant’s Wahl products. Additionally, 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 the Wahl Products for sale.
Respondent registered and uses the <wahl.dog> domain name in bad faith. Respondent attracts users to its webpage for financial gain by displaying hyperlinks to related third-party websites. Additionally, Respondent had actual knowledge of Complainant’s rights in the WAHL mark at the time the disputed domain name was registered.
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 under Policy ¶ 4(a)(i) based upon the registration with the USPTO. 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).”).
Respondent’s <wahl.dog> domain name is identical and/or confusingly similar to Complainant’s mark because it incorporates Complainant’s WAHL mark in its entirety, simply adding the “.dog” gTLD.
Respondent does not have rights or legitimate interests in the <wahl.dog> domain name Respondent is not licensed or authorized to use Complainant’s WAHL mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Gabriella Garlo” as the registrant and no information shows that Complainant has authorized Respondent to use the WAHL mark. Therefore, Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Respondent doesn’t use the <wahl.dog> domain for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Respondent uses the 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. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Respondent registered and uses the <wahl.dog> domain name in bad faith because Respondent attracts users to its webpage for financial gain by displaying hyperlinks to related third-party websites. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Wahl Clipper Corporation v. rayan cash / gewcorps.com, FA 1898556 (Forum June 26, 2020) (finding bad faith where domain resolved to parked page displaying sponsored hyperlinks labeled with terms related to Complainant’s Wahl Products); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Additionally, Complainant Respondent had actual knowledge of Complainant’s rights in the WAHL mark at the time the <wahl.dog> domain name was registered. Therefore, Respondent registered and uses the domain name in in bad faith under Policy ¶ 4(a)(iii) See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wahl.dog> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 7, 2021
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