WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Conair Corporation v. Istvan Horvath / WhoisGuard, Inc.

Case No. D2015-0129

1. The Parties

The Complainant is Conair Corporation of Stamford, United States of America (“USA”) represented by Gibney, Anthony & Flaherty, LLP, USA.

The Respondent is Istvan Horvath of Baja, Hungary / WhoisGuard, Inc. of Panama, Panama.

2. The Domain Names And Registrar

The disputed domain names <babyliss-cz.com>, <babyliss-hu.com>, <babyliss-hu.net>, <babyliss-pl.com> and <babyliss-sk.com> are registered with eNom (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2015. On January 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 29, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2015.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 2, 2015. 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, Conair Corporation (“Conair”), is a corporation organised and existing under the laws of the State of Delaware, USA, and has its principal place of business in the State of Connecticut, USA. The Complainant is a manufacturer and distributor of personal care products and health and beauty products for both professionals and consumers. It has been in the health and beauty products industry for over 50 years. Conair is the owner of numerous federal trademark registrations in the U.S. Patent and Trademark Office. These include BABYLISS, registered on March 10, 1981, Registration No. 1148225 (in relation to electric hair styling apparatus) and MIRACURL, registered on July 9, 2013, Registration No. 4365347 (in relation to electric hair curlers and electric hair curling irons).

The dates of registration of the disputed domain names are as follows:

<babyliss-sk.com> July 28, 2014;

<babyliss-hu.net> August 6, 2014;

<babyliss-hu.com> July 21, 2014;

<babyliss-cz.com> July 28, 2014;

<babyliss-pl.com> July 28, 2014.

5. Parties’ Contentions

A. Complainant

Because of Conair’s extensive advertising, its worldwide sales and its popularity, Conair says that its registered trademarks have acquired secondary meaning: the result is that any product, advertisement, service or domain name bearing such marks “are immediately associated with Conair in the minds of consumers, the public and trade.”

The Complainant is the exclusive owner of the copyrights for the images used in connection with its authorised websites. These include “www.babyliss.co.uk” and “www.babyliss.eu”.

The Complainant’s case is based on the unauthorised use of its BABYLISS trademark, and its contentions are that:

- the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain names;

- the Respondent registered and is using the disputed domain names in bad faith.

The Complainant seeks the transfer of the disputed domain names to itself.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules states that the Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any Rules and principles of law that it deems appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the 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.

Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant says that the disputed domain names “wholly incorporate the Complainant’s BABYLISS trademark as the dominant part of the domain name. The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical of confusingly similar to the registered trademark”. In The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, the panel stated that: “the domain name incorporates the RITZ mark in its entirety. Numerous WIPO panels have found that a domain name that wholly incorporates the complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy.”

The Complainant adds that the Respondent’s use of a generic geographical suffix such as “sk” for Slovakia, “hu” for Hungary, “cz” for the Czech Republic and “pl” for Poland as the only other element of the disputed domain names “does not dispel any confusion”. For example, in Hachette Filipacchi Presse v. Xubing, WIPO Case No. D2005-1248, the panel stated that the Complainant asserted that “the domain name at issue is identical to its ELLE registered trademarks with the addition of the letters CN, an abbreviation for China. That abbreviation is clearly no more than a geographical indication. The dominant element of the domain name is ELLE. The operative part of the domain name at issue – “elle” – is identical with Complainant’s ELLE trademarks. In addition, the well-known status of the Complainant’s ELLE trademark/brand is such that the domain name at issue comprising “elle” with the suffix “cn” as a geographical indicator is also confusingly similar to the Complainant’s mark.”

The Complainant argues that, if anything, the addition of a geographical suffix to a trademark “increases the confusion given that it is a common way for international entities, such as Conair, to designate their global subdivisions.”

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant says that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Indeed, those domain names “were, and in most cases still are, being used to resolve to websites which offer for sale and sell counterfeit Conair merchandise and/or merchandise which bear a confusing similarity to authentic Conair merchandise”.

Additionally, the infringing websites do not contain any apparent disclaimers that they are not affiliated with Conair: “instead they foster the misconception that the Respondent is somehow affiliated with Conair […]. Such activity does not constitute a legitimate noncommercial or fair use of Complainant’s trademarks.”

The Respondent has ceased use of two of the disputed domain names. However, the Respondent’s current passive holding of two of those domain names “does not constitute a bona fide or fair use. Where the disputed domain names do not have any content, there is essentially no use of those domain names”.

In Vivo S.A., Portelcom Participações S.A. v. Whois Privacy Services provided by DomainProtect LLC, WIPO Case No. D2010-0968, the panel stated that “The owners of the domain name vivotorpedo.com are accepting offers from interested parties willing to obtain ownership rights over the domain name. You may learn more about how to place your offer by clicking [link]. Respondent is not, however, actively offering any other goods or services, or making use of the site for any sort of other information or commentary that might support a finding of bona fide or fair use. Therefore, the Panel rules that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.”

Paragraph 4(c) of the Policy sets out circumstances which, without limitation, may demonstrate a right or legitimate interest in a domain name. The Respondent was entitled to deal with the Complainant’s allegations, and was entitled to demonstrate any right or legitimate interest in the domain name, by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. Whilst it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy, it is clearly established that, in relation to the second element of the Policy, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case: whether or not a Respondent has rights or legitimate interests is a question which a Respondent can answer better than a Complainant.

For the foregoing reasons, the Panel is satisfied that the Complainant has shown its compliance with the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated above, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith. This includes the circumstance at paragraph 4(b)(iv) of the Policy:

“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complainant’s case is that the Respondent’s use of the disputed domain names to sell allegedly counterfeit Conair merchandise (or merchandise which bears a confusing similarity to authentic Conair merchandise), shows that the Respondent was aware of Conair’s exclusive rights to the BABYLISS trademark “yet registered the Disputed Domain Name with the express purpose of creating an association with the Complainant.”

As stated earlier, the Complainant’s case is that the disputed domain names were and still are being used to resolve to websites which offer for sale apparent counterfeit Conair merchandise. And whilst those infringing websites are in different languages, the Respondent “has copied numerous images from the Authorised Conair Websites into the Infringing Websites […]. The impression conveyed by the widespread use of Conair’s copyrighted images on the Infringing Websites is that the Respondent is affiliated with Conair or the BABYLISS or MIRACURL brands”. In Wintershall Holding GmbH v. Tracey Morgan, WIPO Case No. D2011-1456, the panel stated that “considering the fact that the Respondent has copied the content of the Complainant’s website […] the Panel concludes that the Respondent is using the disputed domain name in bad faith”.

Finally, the Complainant relies on the decision in the Vivo SA case mentioned earlier to support its contention that even the Respondent’s passive holding of two of the disputed domain names, following bad faith registration, is capable of bad faith use.

It is again appropriate to note that the Respondent was entitled to answer the Complainant’s case by serving a Response, but has chosen not to do so.

The Panel is satisfied that the Complainant has provided evidence of bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy, and has therefore proved 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 <babyliss-cz.com>, <babyliss-hu.com>, <babyliss-hu.net>, <babyliss-pl.com> and <babyliss-sk.com> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist
Date: March 8, 2015