The Complainant is Conair Corp. of Stamford, Connecticut, United States of America ("United States" or "US"), represented by Gibney, Anthony & Flaherty, LLP, United States.
The Respondent is Jacker Hunter of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Web Commerce Communications Limited dba WebN (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 19, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Complainant filed an amendment to the Complaint on March 7, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was March 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 29, 2016.
The Center appointed Jon Lang as the sole panelist in this matter on April 11, 2016. 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 Domain Name was registered by or on behalf of the Respondent on October 30, 2015. Not much more is known about the Respondent as it did not take part in these proceedings.
The Complainant is a manufacturer and distributor of small appliances, personal care products, and health and beauty products for both professionals and consumers and has been in the health and beauty products industry for over 50 years. It is the owner of numerous US federal trademark registrations which are used in connection with the promotion, advertisement, offer for sale and sale of its merchandise, including Trademark Registration No. 1148225 for BABYLISS (registration date: March 10, 1981) and Trademark Registration No. 4561367 for BABYLISSPRO (registration date: July 1, 2014). 5. Parties' Contentions A. Complainant
The following sets out the key contentions of the Complainant. Introduction
The Complainant has exclusive rights to its registered trademarks, including but not limited to the BABYLISS mark. It has not licensed or authorized the Respondent to use its marks. It is also the exclusive owner of the copyright in the images used in connection with its authorized websites, including at "", "" and "". As a result of extensive advertising, sales and worldwide popularity, the Complainant's registered trademarks have acquired secondary meaning so that any product, advertisement, service or domain name bearing such marks are immediately associated with the Complainant in the minds of consumers, the public and trade. Confusing Similarity
The Domain Name wholly incorporates the Complainant's BABYLISS trademark and its dominant element, making it confusingly similar to the Complainant's trademark. Internet users will most likely believe that the Domain Name is sponsored, endorsed by or affiliated with the Complainant. The Respondent's use of the Domain Name to advertise for sale products which bear the Complainant's BABYLISS and other trademarks (MIRACURL, CURL SECRET, and PERFECT CURL), and use of the Complainant's copyright images on the website to which the Domain Name resolves, substantially increases the confusing similarity.
The differences between the Complainant's BABYLISS trademark and the Domain Name are minor and do nothing to distinguish the two - the term "4u" is added in the Domain Name (which if anything, increases confusion) and it has ".com" at the end (a non-distinctive generic Top-Level Domain ("gTLD") suffix required for registration). No Rights or Legitimate Interests
The Respondent is not using, or making any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. It is being used for the purposes of a website which offers for sale and sells counterfeit merchandise and/or merchandise which bears a confusing similarity to authentic merchandise of the Complainant, including BABYLISS branded hair straighteners.
The Complainant has received statements of inquiry and receipts from consumers who have purchased, from the website to which the Domain Name resolves, counterfeit products and/or merchandise which bear a confusing similarity to the Complainant's authentic merchandise. Several such customers, after experiencing safety issues, sent the products to the Complainant for inspection and upon examining the aforementioned products, the Complainant confirmed that they were counterfeit.
Furthermore, by prominently featuring the BABYLISS (and BABYLISSPRO) trademark throughout the website to which the Domain Name resolves, while selling counterfeit and/or infringing merchandise, the Respondent is passing itself off as the Complainant or one of its authorized dealers. The website does not contain any apparent disclaimers that it is not affiliated with the Complainant. Instead, it fosters the misconception that the Respondent is somehow affiliated with the Complainant by making copious references to the Complainant's trademarks. Such activity does not constitute a legitimate noncommercial or fair use of the Complainant's trademarks.
The Respondent is not commonly known by the Domain Name or by the BABYLISS trademark and is not authorized or licensed to use the Complainant's trademarks. Bad Faith
The Respondent's intention in registering the Domain Name was to capitalize on the fame of the BABYLISS mark and acquire commercial gain as a result of Internet user confusion, and has therefore registered and is using the Domain Name in bad faith.
Given the Respondent's use of the Domain Name to sell counterfeit merchandise and/or merchandise which bear a confusing similarity to authentic merchandise of the Complainant, there can be no doubt that the Respondent was aware of the Complainant's BABYLISS trademark and registered the Domain Name for the express purpose of creating an association with the Complainant.
The Respondent has copied numerous images from the Complainant's authorized websites into the website associated with the Doman Name. The Respondent could have no legitimate reason to do so. The impression conveyed is that the Respondent is affiliated with the Complainant or its brands.
The Respondent is using the Domain Name and the website to which it resolves to sell counterfeit and/or infringing merchandise, while prominently displaying the Complainant's trademarks. Despite the obvious resulting consumer confusion, the Respondent has failed to disclose its lack of relationship with the Complainant.
The Respondent registered the Domain Name in bad faith and has made no legitimate use of it. The Respondent has engaged in conduct that constitutes bad faith for the purposes of the Policy, particularly by attempting to attract, for commercial gain, users to the Domain Name and website to which it resolves by creating a likelihood of confusion with the Complainant's registered trademarks. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the BABYLISS trademark.
Ignoring the gTLD ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's BABYLISS trademark, followed by the number and letter combination "4u". As the BABYLISS trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
The BABYLISS trademark is clearly recognizable within the Domain Name. It is a well-known mark and the first element of the Domain Name. The only real issue is therefore whether the addition of "4u" renders the Domain Name something other than confusingly similar to the Complainant's BABYLISS trademark. Clearly, it does not.
Even if one were to adopt a possibly more stringent test and require, as some UDRP panels have done, a risk that Internet users may believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would satisfy this first element of the three part test. The impression created by the Domain Name may well give rise to the possibility that Internet users would think that the owner of the Domain Name is in fact the owner of the Complainant's BABYLISS trademark to which it is similar, or that there is some form of association between the Respondent and the Complainant. The addition of "4u" immediately after the word "babyliss" would most probably only enhance, rather than lessen, the risk of confusing similarity.
The Panel finds that the Domain Name is confusingly similar to the BABYLISS mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding. The answer to that question must be a resounding "no". It is difficult to conceive of any argument that could be advanced in the circumstances (including any against the allegation that the website to which the Domain Name resolves, which makes liberal use of the Complainant's intellectual property, sells counterfeit goods), that would assist the Respondent.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. (See paragraph 4(b)(iv) of the Policy).
The Respondent was clearly aware of the Complainant's BABYLISS trademark given the (unauthorized) use to which the Domain Name has been put. The purpose behind the registration appears to have been to attract Internet users to the Respondent's website using a domain name confusingly similar to the Complainant's BABYLISS trademark. In other words, precisely the circumstances envisaged above.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 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.
Jon Lang
Sole Panelist
Date: April 22, 2016
Full & Egal Universal Law Academy