ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Great Clips, Inc. v. Kissi Kissi / Kartik Saini, Lootkaro Case No. D2023-1886 1. The Parties The Complainant is Great Clips, Inc., United States of America ("United States"), represented by Greenberg Traurig, LLP, United States. The Respondents are Kissi Kissi, India and Kartik Saini, Lootkaro, India (collectively referred to as the "Respondent"). 2. The Domain Names and Registrar The disputed domain names , , and are registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2023. On April 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 28, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 2, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 5, 2023. The Center verified that the Complaint together with the amended 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 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2023. The Center received an informal email communication from the Respondent on May 29, 2023. page 2 The Center appointed Jane Seager as the sole panelist in this matter on June 28, 2023. 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 Established in the United States in 1982, the Complainant operates a chain of hair salons, with some 4,400 locations throughout the United States and Canada. The Complainant's operations comprise over 700 franchisees, employing over 30,000 hair stylists, serving over 2 million customers per week. The Complainant is the owner of a number of trademark registrations for GREAT CLIPS, including the following: - United States Trademark Registration No. 1341594, GREAT CLIPS, registered on June 11, 1985; - United States Trademark Registration No. 4048419, GREAT CLIPS, registered on November 1, 2011; and - United States Trademark Registration No. 6446634, GREAT CLIPS, registered on August 10, 2021. The Complainant is also the registrant of the domain name , which resolves to the Complainant's official website, where discounts and coupons are provided for use in connection with the Complainant's services. The disputed domain name was registered on November 30, 2018. The disputed domain name was registered on April 5, 2022. The disputed domain name was registered on January 16, 2023. At the time of submission of the Complaint to the Center, the disputed domain names resolved to websites purporting to offer discount codes and printable coupons for use in connection with the Complainant's services. The websites available at "www.greatclipscoupons2019.com" and "www.greatclipscouponscode.com" also featured banner advertising and click-through advertising links to third-party products. At the time of this decision, the disputed domain name no longer resolves to an active website. 5. Parties' Contentions A. Complainant The Complainant asserts rights in the GREAT CLIPS trademark. The Complainant submits that the disputed domain names are confusingly similar to its GREAT CLIPS trademark. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, but rather that the Respondent is using them to divert Internet users to the Respondent's websites where unauthorized coupons are offered. The Complainant argues, in this regard, that the Respondent's websites are designed to mislead Internet users into purchasing potentially fraudulent coupons that are not offered by the Complainant and that will not be accepted at the Complainant's locations, as well as downloading malware or unsolicited browser extension software, all of which are presumed to generate commercial gain for the Respondent. The Complainant further submits that the Respondent is not commonly known by the disputed domain names, and that the page 3 Respondent is not making any legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith. The Complainant argues that the Respondent has used the disputed domain names in a manner that causes disruption to the Complainant's business in bad faith pursuant to paragraph 4(b)(iii) of the Policy, and that by including sponsored advertising on the websites to which the disputed domain names resolved, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Complainant further asserts that the Respondent's registration of the disputed domain names using a privacy service to mask its identity amounts to further evidence of bad faith. The Complainant requests transfer of the disputed domain names. B. Respondent In an informal email communication dated May 29, 2023, the Respondent stated: "Hello, Team, I'm Only posting discount coupons for great clips and I have had this domain for more than 4 years. If you want to add something in my domain on behalf of great clips like this is not an official page of great clips etc. I'll add that. So, Please try to understand. I'm not doing anything wrong and not claiming these websites are official. Thanks Regards kartik saini" The Respondent did not submit a formal Response to the Complaint. 6. Discussion and Findings 6.1. Procedural Matter: Consolidation of the Respondent Paragraph 5(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2, where a complaint is filed against multiple respondents, UDRP panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. In the present case, the disputed domain names were registered by two nominally-distinct registrants. Notwithstanding the differences in the registrant names, the Panel notes that the disputed domain names were all registered using the same registrant email address. The WhoIs records for the disputed domain names contain further commonalities, notably the registrant city and the registrant state/province. In addition, all three disputed domain names comprise the Complainant's GREAT CLIPS trademark, and have been used for similar purposes, i.e., to resolve to websites that purported to offer discount codes and coupons to be used in connection with the Complainant's services. In its informal email communication, the Respondent did not disclaim ownership of any of the disputed domain names. The Panel finds that the disputed domain names were registered by the same registrant, or are subject to common control, such that consolidation of the Respondent would be appropriate in the present instance. The Panel therefore grants the Complainant's request for consolidation of the Respondent. page 4 6.2. Substantive Matters In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the trademark GREAT CLIPS, the registration details of which are provided in the factual background section above. Each of the disputed domain names incorporates the Complainant's GREAT CLIPS trademark in its entirety as its leading element, omitting the space between the terms making up the Complainant's trademark. Prior UDRP panels have held that where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing; see WIPO Overview 3.0, section 1.7. Prior UDRP panels have further held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview 3.0, section 1.8. The Panel finds that the addition of the elements "code", "coupons2019", and "couponscode" does not prevent a finding of confusing similarity between the disputed domain names and the Complainant's GREAT CLIPS trademark, which remains clearly recognizable in each of the disputed domain names. The generic Top-Level Domain ".com" may be disregarded for purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1. The Panel finds the disputed domain names to be confusingly similar to the GREAT CLIPS trademark in which the Complainant has rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element; see WIPO Overview 3.0, section 2.1. As noted above, the disputed domain names have been used to resolve to websites that purported to offer discount codes and coupons for use in connection with the Complainant's hair salon services. The websites available at "www.greatclipscoupons2019.com" and "www.greatclipscouponscode.com" also featured banner advertising and click-through advertising links to third-party products. The Complainant asserts that the page 5 discount codes and coupons offered via the Respondent's websites do not originate from the Complainant, and that genuine discount codes and coupons are distributed online via the Complainant's official website. The Complainant has not granted the Respondent any license or other authorization to engage in such activities or to make use of its trademark in a domain name or otherwise. There appears to be no prior business relationship between the Parties. The Panel finds that by using the disputed domain names in such a manner, the Respondent has sought to divert Internet users seeking the Complainant's website to the Respondent's website. Given that the Complainant offers its discount codes and coupons via its own website, the Panel considers that such activity has the effect of disrupting the Complainant's business. Moreover, noting that the websites available at "www.greatclipscoupons2019.com" and "www.greatclipscouponscode.com" also featured banner advertising and click-through advertising links to third-party products, the Panel infers that the Respondent likely derived click-through revenue from the presence of such advertising on its websites, thereby capitalizing on a perceived impression of association between the disputed domain names and the Complainant's GREAT CLIPS trademark. Such use of the disputed domain names does not amount to a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Respondent is identified as "Kissi Kissi / Kartik Saini, Lootkaro", which bears no resemblance to the disputed domain names. There is no evidence to support a finding that the Respondent is commonly known by the disputed domain names as contemplated by paragraph 4(c)(ii) of the Policy. Nor is the Respondent making legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. The Panel notes that the Respondent has come forward denying any bad-faith use of the disputed domain names, and offering to place a disclaimer-like statement on the websites to which the disputed domain names resolve. In the circumstances of the present case, the Panel does not consider that the mere presence of a disclaimer on the Respondent's websites would cure the Respondent's illegitimate use of the disputed domain names. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Having considered the Respondent's informal Response to the Complainant, the Panel concludes that the Respondent has failed to produce relevant evidence of a nature to rebut the Complainant's prima facie case. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant's registration of its GREAT CLIPS trademark predates the Respondent's registration of the disputed domain names by over 30 years. The Respondent's knowledge of the Complainant's GREAT CLIPS mark can be readily inferred from the contents of the Respondent's websites, which repeatedly make direct reference to the Complainant. The Panel finds that the Respondent, having no authorization to make use of the Complainant's trademark, proceeded to register the disputed domain names with a view to engaging in activity that would have the effect of disrupting the Complainant's business, and from which the Respondent would derive commercial gain flowing from perceived association between the disputed domain names and the Complainant's trademark, in bad faith. In the circumstances, the Panel finds that the Respondent's registration of three domain names targeting the Complainant's GREAT CLIPS trademark further evidences the Respondent's bad faith. By using the disputed domain names in the manner described above, the Panel finds that the Respondent has sought to create a misleading impression of association between the disputed domain names and the Complainant's GREAT CLIPS trademarks, and the discount codes and coupons purportedly offered therein, in a way that caused disruption to the Complainant's business. Further noting that the websites available at "www.greatclipscoupons2019.com" and "www.greatclipscouponscode.com" also featured banner advertising page 6 and click-through advertising links to third-party products, the Panel accepts the Complainant's contention that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the disputed domain name no longer resolves to an active website does not materially affect the Panel's findings above. The Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain names , , and be transferred to the Complainant. /Jane Seager/ Jane Seager Sole Panelist Date: July 13, 2023
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