WIPO Arbitration and Mediation Center
Conair Corporation v. Jeffrey Matloff
Case No. D2006-0923
1. The Parties
The Complainant is Conair Corporation, a Delaware corporation with its principal place of business in Stamford, Connecticut, United States of America.
The Respondent is Jeffrey Matloff, Delray Beach, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain names <conairhospitality.com> and <waringhospitality.com> (the “Domain Names”) are registered with Melbourne IT Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2006. On July 23, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 24, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing registrant contact details for Respondent. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 August 8, 2006. In accordance with the Rules, paragraph 5, the due date for a response was August 28, 2006. The Respondent has not filed a response with the Center.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on September 6, 2006. 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 engaged in the business of developing, manufacturing and marketing health and beauty care products and kitchen and electronic appliances.
Respondent registered the Domain Names on September 23, 2004.
5. Parties’ Contentions
Complainant contends that:
- Complainant is recognized worldwide as a leader in the personal care product and kitchen appliance markets;
- Complainant and/or its predecessors have used the WARING trademark since as early as 1945, and Complainant has used the CONAIR trademark since as early as 1973 (collectively, the “Marks”) in connection with developing, manufacturing and marketing health and beauty care products and kitchen and electronic appliances;
- Complainant uses the Marks in multiple channels of trade including both retail products and commercial products markets, the latter of which includes food service establishments, the hospitality sector and the laboratory product sector;
- Complainant is the owner of numerous U.S. trademark registrations containing the terms “conair” and “waring;”
- Complainant has developed significant goodwill in connection with the Marks throughout the world;
- The Marks are famous, and are recognized and associated with Complainant’s products throughout the world;
- The Domain Names are confusingly similar to the Marks, Respondent has no right or legitimate interests in the Domain Names, and Respondent has registered and used the Domain Names in bad faith.
Complainant requests that the Domain Names be transferred to Complainant.
Respondent has not submitted a response to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Names are 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 Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
To satisfy this element, Complainant must establish it has rights to a trade or service mark, and that the disputed domain names are identical or confusingly similar to such mark. See Policy, paragraph 4(a)(i). Under the Policy, the test of confusing similarity is “confined to a consideration of the disputed domain name and the trademark.” America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (February 22, 2001).
Complainant has shown that it has valid trademark registrations for the Marks, and contends that it has used the Marks in commerce for several decades. The Domain Names at issue incorporate Complainant’s Marks in their entirety. Under paragraph 4(a)(i), “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy. . . .” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001).
Respondent, in defaulting, does not dispute that the Domain Names are identical or confusingly similar to the Marks.
The Panel thus finds that Complainant has rights to the Marks, and that the Marks are famous, are identifiable with Complainant, and have considerable good will. The Panel further finds that the Domain Names are confusingly similar to Complainant’s Marks. Complainant has thus satisfied its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Names in that:
(i) Respondent is not commonly known by the Domain Names, does not own any trademark or service mark registrations of the Domain Names, nor is making a legitimate or fair use of the Domain Names.
(ii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. Rather, nearly two years after registration, the Domain Names resolve to websites that are under construction.
The Panel finds that Complainant has made a sufficient prima facie showing that Respondent has no rights or legitimate interests in the Domain Names.1 Respondent has not responded to Complainant’s contentions in this regard. Complainant’s contentions are therefore deemed undisputed, and Complainant’s burden of proof under paragraph 4(a)(ii) of the Policy is thereby satisfied.
C. Registered and Used in Bad Faith
Complainant has shown that Respondent has wholly incorporated the Complainant’s renowned Marks into the Domain Names, and contends that the Domain Names combine the Marks with a term that is descriptive of one of the markets for Complainant’s products. Moreover, Complainant contends that Respondent’s registration of the Domain Names, occurring years after Complainant’s registration of the Marks, evidences that Respondent knew of Complainant’s longstanding rights in the Marks and the valuable goodwill associated with the Marks. Complainant further contends that consumers in the hospitality sector looking for Complainant’s products may “guess” at Complainant’s domain name and be diverted to the Respondent’s sites, and that Respondent’s conduct disrupts Complainant’s ability to conduct business at the Domain Names.
The Panel finds that Complainant has thus made a sufficient showing that the Domain Names have been registered and are being used in bad faith. Respondent has not responded to Complainant’s contentions in this regard. Complainant’s contentions are therefore deemed undisputed, and Complainant’s burden of proof under paragraph 4(a)(iii) of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <conairhospitality.com> and <waringhospitality.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: September 21, 2006
1 Although the ultimate burden of proof under paragraph 4(a)(ii) of the Policy is on the complainant, where a complainant has made a prima facie showing in this regard the burden shifts to the respondent to rebut such showing. See Dr. Ing. h.c.F. Porsche AG v. Hakan Melek, WIPO Case No. D2004-0982 (January 26, 2005); John Swire & Sons Limited v. David Huang, WIPO Case No. D2000-1106 (December 5, 2000); Cimcities, LLC v. John Zuccarini D/B/A/ Cupcake Patrol, WIPO Case No. D2001-0491 (May 31, 2001)).