The Complainant is Wahl Clipper Corporation of Sterling, Illinois, United States of America ("United States"), represented by WAHL GmbH, Germany.
The Respondent is T. Lanzaat of Almere, the Netherlands, represented by Van Diepen Van der Kroef Lawyers, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Doman Name") is registered with Realtime Register B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 19, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 19, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018. Upon the request of the Respondent of May 16, 2018, the Response due date was extended to May 26, 2018. The Response was filed with the Center on May 25, 2018. On May 30, 2018, June 4, 2018, and June 11, 2018, the Complainant submitted Supplemental Filings to the Center. On June 1, 2018, June 5, 2018, June 7, 2018, and June 12, 2018, the Respondent submitted Supplemental Filings to the Center.
The Center appointed John Swinson as the sole panelist in this matter on June 5, 2018. 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 Wahl Clipper Corporation of the United States. The Complainant was founded in 1919 and is one of the leading hair clipper manufacturers worldwide. The Complainant has registered trade marks for WAHL in more than 80 jurisdictions, including United States registered trade mark number 527,562, registered on July 11, 1950 (the "Trade Mark"). The Complainant has provided evidence of the registration of the Trade Mark in the United States and European Union ("EU").
The Respondent is Tycho Lanzaat of the Netherlands. According to the Response, the Respondent has been a reseller of the Complainant's clipper products for more than 12 years, initially via a company known as Keppershandel BV, and now via a company known as Tondeuse Shop BV.
The Respondent registered the Disputed Domain Name on September 26, 2016. The website at the Disputed Domain Name is an online store operated by the Respondent (via Tondeuse Shop BV) which sells the Complainant's clipper products. At the time the Complaint was filed, the top left corner of the website at the Disputed Domain Name contained the words "PREMIUM WAHL RESELLER" below the words "TONDEUSE.SHOP". At present, those words say "WAHL PRODUCT RESELLER". 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Complainant was founded in 1919 and has registered trade marks for WAHL in more than 80 jurisdictions, including in the EU and the United States.
The Disputed Domain Name is confusingly similar to the Trade Mark despite the addition of the new generic Top Level Domain ("gTLD") "shop". It is well established that a domain name that wholly incorporates a complainant's registered trade mark is confusingly similar to the trade mark. Rights or Legitimate Interests
The Respondent does not own any trade marks related to WAHL and the Respondent makes the Disputed Domain Name look like an official website of the Complainant. The Complainant has not licensed, permitted or authorized the Respondent to register or use a domain name incorporating the Complainant's Trade Mark.
Any right that a reseller may make of a trade mark does not necessarily extend to the right to incorporate that trade mark into a domain name without authorization. The words "Premium Wahl Reseller" are placed closely under the words "Tondeuse Shop", however this does not disclaim that the Respondent's website is not an official website of the Complainant.
The Respondent has copied the "WAHL History" from the Complainant's website and added this information to the "About us" page on the website at the Disputed Domain Name. This could lead consumers to think that the website is controlled by the Complainant. Such use of the Disputed Domain Name has been misleading consumers and attracting the Complainant's potential consumers to the Respondent's website.
The Respondent advertised Wahl products and prominently displayed the Disputed Domain Name and the email address […]@ in Kapper magazines, which indicated that the Disputed Domain Name is the Online Wahl Brand Store. The Respondent also uses the Trade Mark on its invoices, making itself look like the Complainant or a subsidiary of the Complainant.
The Respondent has been using the Disputed Domain Name to intentionally and falsely suggest that the website under the Disputed Domain Name is an official website of the Complainant. Registered and Used in Bad Faith
The Complainant is a leader in the home grooming category, and has sold products in approximately 165 countries for over 90 years. The Disputed Domain Name was registered on September 26, 2016. The Complainant's products are sold on the website associated with the Disputed Domain Name. Therefore, it is undeniable that the Respondent had knowledge of the Trade Mark when he chose the Disputed Domain Name.
Consumers who view the Disputed Domain Name will expect to be linked to a website associated with the Complainant's business. The Respondent has used the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the sponsorship or affiliation of the website at the Disputed Domain Name. B. Respondent
The Respondent makes the following submissions. Identical or Confusingly Similar
The Respondent does not contest that the Disputed Domain Name is identical or confusingly similar to the Complainant's Trade Mark. Rights or Legitimate Interests
The Respondent has full authorization of the Complainant and its Dutch affiliated company to use the Trade Mark in the Disputed Domain Name. The Respondent has been a reseller of the Complainant's products for more than 12 years. These were originally sold via the Respondent's private limited company Kapershandel BV.
In November 2016 the Respondent contacted Wahl Nederland BV, a subsidiary of the Complainant, with the proposal to start an online shop in which only Wahl products were being sold. The Respondent informed the General Manager of Wahl Nederland BV and Sales Director of Wahl Netherlands and Germany on November 30, 2016 that it would "fully focus on the sale of Wahl products via a separate web shop". The Respondent states that the Sales Director was authorized to represent the Complainant and was closely involved in the development of the website at the Disputed Domain Name.
The Respondent is using the Disputed Domain Name for a bona fide purpose as:
- The Respondent is offering goods and uses the Disputed Domain Name only to sell Wahl goods;
- The Respondent prominently discloses that he is merely a reseller, not the Complainant (or any official Wahl company member); and
- The Respondent has not registered numerous WAHL related domain names, only the Disputed Domain Name.
The Respondent's use of the Trade Mark does not carry any risk of confusion with the Complainant. The website at the Disputed Domain Name clearly states that it is operated by Tondeuse Shop BV and not the Complainant. There is a clear agreement between the parties concerning the Respondent's use of the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent does not contest having knowledge of the Trade Mark, however claims the registration was done with the full knowledge and consent of Wahl Nederland BV, an authorized representative of the Complainant. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Procedural Issues
Both the Complainant and the Respondent submitted a number of supplemental submissions, which the Panel has reviewed. The submissions were excessive and unnecessary, and did not change the Panel's decision in this matter. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name incorporates the Trade Mark in its entirety, and no additional words have been added. The use of a new gTLD can, in some circumstances, play a role in determining identity or confusing similarity. However, in this case, the new gTLD ".shop" does not serve such a purpose. It is a generic term and as such the Panel considers that ".shop" can be ignored for the purpose of testing confusing similarity, in the same way that ".com" is generally ignored (see, e.g., Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698). This is particularly the case where the website at the Disputed Domain Name is an online shop.
The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
One way in which rights or legitimate interests can be demonstrated is by the Respondent's bona fide use of the Disputed Domain Name in connection with an offering of goods or services, before he received notice of the dispute (paragraph 4(c)(i) of the Policy).
The Respondent operates a company which sells the Complainant's products. The Respondent has not provided specific evidence of his affiliation with the Complainant's agent, but the Complainant has not disputed that this is the case. However, based on the information provided in the case file, it is unclear exactly what arrangement exists or has existed between the Complainant and the Respondent.
On November 30, 2016, the Respondent emailed the General Manager of Wahl Nederland BV, a subsidiary of the Complainant, and the Sales Director of Wahl Netherlands and Germany, stating that he had registered the Disputed Domain Name and would be focusing purely on the sale of Wahl products. The Respondent stated that he wished to create a new online store for this purpose but, as the creation of this website would be a substantial investment, the Respondent would not do so without approval.
According to the Response, the General Manager of Wahl Nederland BV responded by saying that he would "inform the responsible people at Wahl Group and will get back to you as soon as possible". The Respondent has provided evidence of this exchange, but has not provided any evidence that Wahl Nederland BV agreed to the proposal.
The Respondent has provided evidence of subsequent conversations with the Sales Director (via messaging platform WhatsApp) regarding the content of the website at the Disputed Domain Name. These interactions raise a separate question as to whether or not Wahl Nederland BV, as a subsidiary of the Complainant, had the authority to agree to the Respondent's use of the Trade Mark in the Disputed Domain Name or otherwise.
The Respondent has also provided evidence of a settlement agreement between Wahl Nederland BV, Tondeuse Shop BV and the Respondent. There is disagreement between the Complainant and the Respondent regarding which version of the settlement agreement is the most current, however the parties do appear to agree that no version of the settlement agreement has been executed. As such, the settlement agreement is not binding, so the current version is irrelevant.
Based on this information, at the time the Complaint was filed it does not appear that there was an ongoing contractual relationship between the Respondent and the Complainant, or any express authorization by the Complainant for the Respondent to use the Trade Mark in the Disputed Domain Name. The Complainant states that it has not licensed, permitted, or authorized the Respondent to register or use a domain name incorporating the Complainant's Trade Mark or entered into any agreement that could give the Respondent any right or interest in the Trade Mark.
It is generally accepted that use of a trade mark within a domain name – with other terms appended to the mark as within the domain name – by a reseller may be considered bona fide in certain circumstances. Those circumstances are set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("Oki Data"), in which the panel stated that a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in a domain name if its use meets the following requirements:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trade marked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trade mark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.
Oki Data involved the use of a trade mark within a domain name ("okidataparts") by an authorized reseller. However, even if the Respondent was not an authorized reseller for the Complainant, the Oki Data principles have since been applied to resellers who do not have a contractual relationship with a trade mark owner (see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481).
As this Panel stated in Pangaea Laboratories Ltd, Pacific Direct Intertrading Pty Ltd v. Astrix Pty Ltd,WIPO Case No. DAU2015-0013, "Oki Data is an exception to a general rule. The general rule is that it is generally not permissible to register a domain name that is the same as another's trade mark rights, knowing of those trade mark rights, to seek traffic to a commercial website. Oki Data is a narrow exception to this rule for legitimate resellers, distributors and dealers. Oki Data is also subject to any agreement between the parties".
In this case, the Respondent clearly meets limbs one, two, and four of the Oki Data test. The Respondent is using the Disputed Domain Name to sell Wahl goods only (and is actually selling those goods), and there is no suggestion by the Complainant that the Respondent has registered multiple domain names which incorporate the Trade Mark.
The Panel must consider whether the Respondent meets the third limb of the Oki Data test. The Respondent discloses his relationship with the Complainant through the use of the words "WAHL PRODUCT RESELLER" on the website at the Disputed Domain Name. It seems that consumers are more likely than not to notice them, and conclude that the Respondent is not the Complainant. The Respondent states that the site is run by Tondeuse Shop. The words "TONDEUSE.SHOP" appear above the words "WAHL PRODUCT RESELLER" in the top left corner of each page of the website at the Disputed Domain Name. The words "© Copyright 2018 - W Powered by Tondeuse Shop B.V." appear in small print in the footer of each page of the website at the Disputed Domain Name.
There is an argument that an Internet user may be confused as to the Respondent's relationship with the Complainant, particularly because the home page of the website at the Disputed Domain Name does not make clear that the Respondent is not the Complainant, is not affiliated with the Complainant, and is not the owner of the Trade Mark. The copyright notice which bears the Complainant's mark almost inherently risks being misleading. The "About Us" page even contains an extensive history of the Complainant which, according to the Complaint, was copied directly from the Complainant's official website (without the Complainant's permission). The "About Us" page contains a mere single line about the establishment of the Respondent's business.
Further, panels have especially found that domain names identical to a complainant's trade mark carry a high risk of implied affiliation (see section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")), and as such cannot confer rights or legitimate interests in many circumstances.
Here, the second level of the Disputed Domain Name consists only of the Trade Mark (that is, the Disputed Domain Name is identical to the Complainant's Trade Mark. The Panel agrees that this may lead an Internet user to believe the Respondent is the Complainant (when it clearly is not) or is endorsed by the Complainant (according to the Complainant, it is not) before such user has visited the Respondent's website. However, the Panel considers that the fact that the domain name is identical in this case may not be the deciding factor. With the proliferation of new gTLDs covering terms that represent categories of goods or services, this Panel believes that where the domain name is identical to a complainant's trade mark, the Oki Data factors may require a fuller consideration of whether the overall facts and circumstances of a case, and in particular, the website content, support any claimed nominative fair use or legitimate purpose which is not misleading to consumers. In effect, the TLD takes the place of terms added to a mark under the Oki Data analysis under TLDs such as ".com" which would have previously been possible only at the second level.
As stated by the panel in Oki Data, "[i]t is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. It cannot be used to litigate all disputes involving domain names. If trade mark owners wish to prevent the use of their marks by authorized sales and repair agents in domain names, they should negotiate such protections through appropriate contractual language or, when permitted under the relevant law, seek recovery in classic trade mark infringement or dilution litigation".
In these circumstances, the Respondent is not what would be considered a traditional cybersquatter, and appears to be using the Disputed Domain Name to operate, all other things being equal, a bona fide business. Whether or not the Respondent has express permission from the Complainant to use the Trade Mark in the Disputed Domain Name is an issue which this Panel is not equipped to resolve, and which is better suited to resolution by a court where discovery and further examination is possible.
Here, the Respondent uses the term "reseller" on the top left corner of each page of the website at the Disputed Domain Name. On the one hand this may imply to an Internet user that the Respondent is not the Complainant. On the other hand, users may misinterpret this as signaling authorization which does not in fact exist. In either event, as it stands under the limited remit of the Policy, the Respondent has disclosed his relationship with the Complainant so as to rebut the third limb of the Oki Data test and to sufficiently rebut the Complainant's case under the Policy.
The Complainant, while raising broader potential trade mark infringement questions, has failed to establish the second element of the Policy. D. Registered and Used in Bad Faith
In light of the Panel's finding in relation to the Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is not required to address the final element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: June 26, 2018
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