Complainant is Wahl Clipper Corporation, United States of America, represented by Barnes & Thornburg, United States of America.
Respondent is Privacy Protection Service INC d/b/a PrivacyProtect.org, Australia / Jason Furry, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021. On June 30, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On July 1, 2021, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 23, 2021. In accordance with the Regulations, article 7.1, the due date for Response was August 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2021. On October 1, 2021, the Registrar transmitted by email to the Center further contact information. In light of this information, the Center granted an additional ten-day period for Respondent to indicate whether it wished to participate in these proceedings. No reply was received by the Center.
The Center appointed Richard C.K. van Oerle as the panelist in this matter on October 26, 2021. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual BackgroundComplainant submits that it has been continuously and extensively engaged for over 100 years in the business of marketing and selling hair care products and providing related charitable services to promote education and professionalism in barbering and hair styling, all under a family of marks that contain the trademark WAHL.
According to the evidence submitted, Complainant is the proprietor of several trademark registrations for the wordmark WAHL, including for the Benelux, where the mark was filed on November 26, 1971, and registered on January 1, 1974 (registration number 0082229), and for the European Union, where one mark was filed on January 4, 1999, and registered on January 4, 1999 (registration number 018109851), and another one filed on May 12, 2005, and registered on April 26, 2006 (registration number 004436622), hereinafter collectively referred to as “the Trademark”.
These registrations provide protection for the Trademark under Dutch law.
The disputed domain name was registered on May 27, 2021 by Respondent and resolves to a website on which products are offered bearing the Trademark.
5. Parties’ Contentions A. ComplainantComplainant designs, engineers, manufactures, markets and sells its products under the Trademark in 165 countries worldwide, including in the Netherlands, through retail stores and online retailers.
Complainant markets and sells the products also via Complainant’s many websites, which include “www.wahl.com”, “www.nl.wahl.com”, and “www.eu.wahl.com”.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s Trademark because it incorporates the entire Trademark and simply adds the generic term “store” along with the country code Top-Level Domain (“ccTLD”) “.nl”. These slight differences do nothing to distinguish the disputed domain name from Complainant’s Trademark.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent (1) has never been known or referred to as WAHL or any variation thereof; (2) is not affiliated with, licensed or otherwise authorized by Complainant to use the Trademark; and (3) has not used the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because (1) the disputed domain name is identical and/or confusingly similar to Complainant’s famous Trademark; (2) Respondent had constructive and/or actual notice of Complainant’s rights to the Trademark prior to registering and using the disputed domain name; and (3) Respondent is using Complainant’s Trademark in the disputed domain name and on Respondent’s website without authorization in an attempt to attract Internet users to Respondent’s website for its own financial gain.
According to Complainant, Respondent is using the disputed domain name for commercial gain to misleadingly divert consumers and/or to tarnish or otherwise damage Complainant’s Trademark. The disputed domain name resolves to a website that constitutes a clear and wilful attempt to intentionally impersonate one of Complainant’s official websites, given the appearance of Respondent’s website, including the unauthorized use of the Trademark and photos of Complainant’s WAHL-branded products copied from Complainant’s websites, in what is a clear attempt to pass off Respondent’s website as one of Complainant’s official websites. It is undeniable that Respondent had actual knowledge of Complainant and Complainant’s Trademark prior to registering and using the disputed domain name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsPursuant to Article 2.1 of the Regulations, Complainants must assert and establish each of the following:
a. the disputed domain name is identical or confusingly similar to:
I. a trademark, or trade name, protected under Dutch law in which Complainants have rights; or
II. a personal name registered in the General Municipal Register (“gemeentelijke basisadministratie”) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which Complainants undertakes public activities on a permanent basis; and
b. the registrant has no rights to or legitimate interests in the disputed domain name; and
c. the disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly SimilarThe disputed domain name is confusingly similar to the Trademark as it incorporates the Trademark in its entirety. The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).1
The addition of the term “store” to the Trademark in the disputed domain name does not prevent a finding of confusing similarity between the Trademark and the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s Trademark.
B. Rights or Legitimate InterestsRespondent has no rights or legitimate interests in the disputed domain name because, according to the record, Respondent has never been known or referred to as WAHL or any variation thereof, is not affiliated with, licensed or otherwise authorized by Complainant to use the Trademark, and has not used the disputed domain name in connection with a bona fide offering of goods or services.
The Panel agrees with Complainant’s contention that Respondent has not used and is not using the disputed domain name for a legitimate noncommercial use as it is using the disputed domain name for commercial gain to misleadingly divert consumers and/or to tarnish or otherwise damage Complainant’s Trademark. The disputed domain name resolves to a website that mimicks one of Complainant’s official websites. Respondent’s intent thus to impersonate Complainant is evidenced by the fact that Respondent’s website: (1) prominently displays the Trademark; (2) displays Complainant’s copyrighted photos of the Wahl products, related narrative text, and product packaging directly copied from Complainant’s websites; and (3) displays a copyright notice (“© 2021, WAHL®”) to create the illusion that Respondent’s website belongs to Complainant.
The addition of the term “store” to the Trademark in the disputed domain name may, in the broader circumstances of this case, particularly the associated website content, further triggers an inference of affiliation, as the combination of the Trademark with the word “store” gives the impression that it is a shop operated by Complainant (see WIPO Overview 3.0, section 2.5.1).
Noting also the Respondent’s failure to rebut Complainant’s case, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name.
C. Registered or Used in Bad FaithBy using a domain name that is confusingly similar to Complainant’s Trademark, and given the appearance of Respondent’s website, including the unauthorized use of the Trademark and photos of Complainant’s WAHL-branded products copied from Complainant’s websites, as well as the inclusion of a Complainant copyright notice, it is undeniable that Respondent had Complainant in mind when registering and using the disputed domain name. The Panel concludes that Respondent registered the disputed domain name primarily for the purpose of deceiving consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and thereby disrupting Complainant’s business.
This is sufficient evidence of Respondent’s bad faith registration and use of the disputed domain name.
7. DecisionFor all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name
Richard C.K. van Oerle
Panelist
Date: November 9, 2021
1 In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).