The Complainant is Conair Corp. of Stamford, Connecticut, United States of America (“USA”), represented by Gibney, Anthony & Flaherty, LLP, USA.
The Respondent is Pan Pin, Hong Kong Shunda International Co. Limited of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2014.
The Center appointed Tony Willoughby as the sole panelist in this matter on October 14, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Delaware corporation having its principal place of business in Connecticut, USA. It is engaged in the manufacture and distribution of personal care products including a hand-held professional hair styler, which it markets under the trade mark MiraCurl in combination with the word “Pro”, as can be seen from the Complainant’s domain name (below).
The Complainant operates a website connected to its domain name, which it registered on March 25, 2013.
The Complainant is the registered proprietor of inter alia United States Trade Mark Registration No. 4365347 MIRACURL (word) registered July 9, 2013 (filed October 6, 2011) in class 9 for “electric hair curlers; electric hair curling irons”.
The Respondent’s organization identified on the Registrar’s Whois database is Hong Kong Shunda International Co. Limited with an address in Hong Kong. The Respondent has a “miracurlprohk” email address.
The Domain Name was registered on September 16, 2013. On or about July 1, 2014 it was connected to what appears to have been a Brazilian website offering for sale “Mira-Curl PRO” hair styling products. Currently the Domain Name is not connected to an active website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its MIRACURL registered trade mark; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and, finally, that the Domain Name was registered and is being used in bad faith. In support of this last contention the Complainant asserts that the Respondent registered the Domain Name for the purpose to which it was being put in early July 2014, namely to connect to a website featuring a number of the pictorial elements of the Complainant’s website and offering for sale “counterfeit and/or infringing merchandise”1 . B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements, namely that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name comprises the name, Miracurl, which is identical to the Complainant’s registered trade mark (see section 4 above) and the generic “.pro” top level domain identifier. Commonly, it is permissible for a panel to ignore the top level domain identifier when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy. However, in this case the top level domain identifier ”.pro”, while descriptive (and in that sense, generic), is precisely descriptive of the market for which the Complainant claims that its electrical hair stylers are suitable, namely the professional market, and its presence in the Domain Name therefore renders the risk of confusion all the more likely.
The Panel is satisfied that whether or not the top level domain identifier is taken into consideration, the Domain Name is identical or confusingly similar to the Complainant’s trade mark. B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant asserts that it has no connection with the Respondent and has not granted the Respondent any permission to use its MIRACURL trade mark for the Domain Name or indeed any other purpose. This is not challenged by the Respondent and the Panel believes it likely that the Complainant’s assertion in this regard is well-founded.
The Complainant has produced evidence to demonstrate that in July, 2014, prior to the filing of this Complaint, the Respondent was using the Domain Name to connect to a website offering for sale “Mira-Curl PRO” hair styling products. The Complainant asserts (without producing any supporting evidence) that the merchandise on the Respondent’s website is “counterfeit and/or infringing merchandise”. The Complainant has, however, produced evidence to demonstrate that the Respondent’s website featured a number of graphical elements identical to those appearing on the Complainant’s website. Given all the surrounding circumstances and the fact that the Respondent has not challenged the Complainant’s evidence to this effect, the Panel finds, on the balance of probabilities, that the product which appeared on the Respondent’s website is likely to have been counterfeit or otherwise infringing. On any analysis such an enterprise cannot, in the view of the Panel, be categorized as a bona fide offering of goods or services sufficient to establish rights or legitimate interests for the purposes of paragraphs 4(c)(i) and 4(a)(ii) of the Policy.
Even if the Respondent’s merchandise was not in fact counterfeit or infringing, it is inconceivable to the Panel that the Respondent, who has evidently been engaged in precisely the same field of activity as the Complainant, could have selected the Domain Name without knowledge of the existence of the Complainant and its MIRACURL trade mark. If there were any doubt in the matter, it is removed when one appreciates that the Respondent has replicated for his website a significant volume of graphical material present in the Complainant’s website.
In the view of the Panel, knowingly adopting a trade mark identical or confusingly to the trade mark of another entity trading in the same field of activity (albeit perhaps not in the same geographical area, as to which point the Panel has no information), cannot give rise to a right or legitimate interest for the purposes of paragraph 4(a)(ii) of the Policy.
The Panel observes that the Respondent has not seen fit to challenge the Complainant’s assertions. If there had been a satisfactory explanation for the Respondent’s adoption of the Domain Name, the Panel would have expected the Respondent to have produced it. In the absence of an explanation from the Respondent the Panel concludes that in adopting the Domain Name the Respondent was deliberately targeting the Complainant’s brand.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
By the same reasoning, and on the evidence supplied by the Complainant, the Panel finds that the Respondent registered the Domain Name and has been using it for the bad faith purpose of attracting to his commercial website Internet users looking for the Complainant’s website, a website which is in fact connected to the Complainant’s very similar domain name, .
The Panel is in no doubt that Internet users in substantial numbers are likely to be deceived into believing that the Domain Name is a domain name operated and/or authorized by the Complainant.
The Panel finds that the Domain Name was registered and is being used in bad faith. To the extent that the use complained of now appears to have ceased (currently, the Domain Name resolves to an inactive website), the presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: October 16, 2014
1 The Complainant also contends that the Respondent is acting in bad faith because he is not providing a certified professional service as required by the “.pro” registration requirements. The Panel has not felt it necessary to address the issue to reach a decision in this case.
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