WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wahl Clipper Corporation v. Thijs de Kiewit, WAHL?

Case No. DNL2021-0034

1. The Parties

The Complainant is Wahl Clipper Corporation, United States of America, represented by Barnes & Thornburg LLP, United States of America.

The Respondent is Thijs de Kiewit, WAHL?, the Netherlands.

2. The Domain Name and Registrar

The disputed domain names <wahlofficial.nl> and <wahltondeuses.nl> are registered with SIDN through Tucows.com Co.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2021. On June 16, 2021, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain names. On June 17, 2021, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2021. In accordance with the Regulations, article 7.1, the due date for Response was July 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 9, 2021.

The Center appointed Alfred Meijboom as the panelist in this matter on August 12, 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 Background

The Complainant has been designing, engineering, manufacturing, marketing and selling hair care products, including electric hair clippers, electric hair trimmers, electric hair shavers, hair care products, and other related goods and accessories for consumer home use, professional use, and use with animals for more than 100 years. Currently, the Complainant sells its products in 165 countries worldwide, including in the Netherlands, through retail stores, online retailers and directly via its websites. The Complainant is the owner of the following registered trademarks, which are valid in the Netherlands:

- Benelux trademark WAHL with registration number 0082229, filed on November 26, 1971, and registered on January 1, 1974, for goods in classes 7, 8, 10, 11, and 21, including electric hair clippers, electric dry razors, hair dryers and combs; and,
- European Union trademark WAHL with registration number 000201327, filed on April 9, 1996, and registered on January 4, 1999, for goods in classes 7, 8, 9, 10, and 11, including razors and hair clippers.

The trademarks listed above are hereinafter referred to as the “WAHL trademarks”.

The Responded registered the disputed domain names on April 4, 2021. The disputed domain names resolve to a website for the sale of the Complainant’s products, which website creates the false impression that it is one of the Complainant’s official websites and on which the Complainant is impersonated.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain names are identical and/or confusingly similar to the WAHL trademarks as the disputed domain names incorporate the WAHL trademarks in their entirety. The only differences between the disputed domain names and the WAHL trademarks are the addition of generic terms “official” and “tondeuses” (i.e. Dutch for “hair clippers”, a word that is closely associated with the Complainant and its products).

The Complainant further alleges that the Respondent has no rights or legitimate interests in the disputed domain names because the Respondent has never been known or referred to as “Wahl” or any variation thereof, is not affiliated with, licensed or otherwise authorized by the Complainant to use the WAHL trademarks, and has not used the disputed domain names in connection with a bona fide offering of goods or services. The Complainant claims that the Respondent’s intent to impersonate the Complainant and the Complainant’s websites is evidenced by the fact that the Respondent’s website does at least the following, with no permission from the Complainant, to knowingly create the false impression that the Respondent’s website is one of the Complainant’s official WAHL websites:

(1) prominently displaying the WAHL trademarks;
(2) displaying the Complainant’s copyrighted photos of the WAHL marked products, related narrative text, and product packaging directly copied from the Complainant’s websites;
(3) displaying a copyright notice (“© 2021, WAHL®”) to create the illusion that the Complainant owns the copyright to the Respondent’s website; and
(4) providing a contact email address that includes the domain (<wahl.nl>), which directs consumers to one of the Complainant’s official websites and is also confusingly similar to the domain [name] for the Complainant’s official website for the Dutch market, which is <nl.wahl.com>.

Moreover, the Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith because the disputed domain names are identical and/or confusingly similar to its famous WAHL trademarks, the Respondent had constructive and/or actual notice of the Complainant’s rights to the WAHL trademarks prior to registering and using the disputed domain names, and the Respondent is using the WAHL trademarks in the disputed domain names and on the Respondent’s website without authorization in an attempt to attract Internet users to the Respondent’s website for its own financial gain.

B. Respondent

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

6. Discussion and Findings

Based on article 2.1 of the Regulations, a request to transfer the disputed domain names must meet three cumulative conditions:

a. the disputed domain names are identical or confusingly similar to:

I. a trademark, or trade name, protected under Dutch law in which the Complainant has 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 the complainant undertakes public activities on a permanent basis; and

b. the respondent has no rights to or legitimate interests in the disputed domain names; and

c. the disputed domain names have been registered or are being used in bad faith.

A. Identical or Confusingly Similar

It is established case law that the Top-Level Domain “.nl” may be disregarded in assessing the similarity between the trademark(s) on the one hand and the disputed domain name(s) on the other hand (see, e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Panel finds that the disputed domain names are confusingly similar to the WAHL trademarks. The Respondent has taken the WAHL trademarks in their entirety and merely added the terms “official”, and “tondeuses” (“hair clippers” in Dutch), which added terms do not prevent a finding of confusing similarity between the disputed domain names and the WAHL trademarks.

Consequently, the Panel finds that the Complainant has satisfied the requirement of article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

Article 3.1 of the Regulations sets out examples of circumstances through which a respondent may demonstrate that it has rights or legitimate interests in a domain name for purposes of article 2.1(b) of the Regulations.

The Complainant undisputedly alleged that the Respondent is not an official reseller of the Complainant. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the “Oki Data decision”), the panel set out four criteria in which an authorized sales or service agent of trademarked goods may use the trademark at issue in its domain name.¹ This decision has been confirmed to be of relevance for the Regulations, inter alia in Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024, Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074, and Bayerische Motoren Werke Aktiengesellschaft v. Quispel Motoren, WIPO Case No. DNL2013-0026. The Panel notes that these considerations equally apply to a situation involving an unofficial reseller of genuine goods, which the Respondent appears to be. The essential issue addressed by the Oki Data decision is whether, in such circumstances, there is a bona fide offering of relevant goods or services, and an absence of any associated deception.

To resolve this issue, the Oki Data decision provides the following cumulative criteria:

(1) the respondent must actually be offering the goods or services under the trademark; and
(2) the respondent must only be offering those goods or services; and
(3) the respondent must not try to take all of the relevant domain names so as to deprive the trademark owner of the ability to register its trademark as a domain name; and
(4) the website must accurately describe the relationship between the respondent and the trademark owner.

Having accessed the website offering WAHL marked products for sale, the Panel applied the test of the Oki Data decision. This website only seems to offer the Complainant’s products under the WAHL trademarks for sale. It is, however, undisputed that this website mimicks an official website of the Complainant, and the Panel found that the website did not describe the relationship between the Respondent and the Complainant, but rather tries to give the Internet user the false impression that the disputed domain names resolve to an official website of the Complainant. Consequently, the disputed domain names do not meet the requirements of the Oki Data decision.

In addition, the Panel finds that the composition of the disputed domain names (reproducing the WAHL trademarks in their entirety, and adding the terms “official”, and “tondeuses”) carries a risk of implied affiliation.

The Panel is further satisfied that the Complainant showed a prima facie case that the Respondent does not otherwise have rights to or legitimate interests in the disputed domain names, as it is undisputed that the Respondent has not been commonly known by the disputed domain names and has not used the disputed domain names in connection with a bona fide offering of goods or services.

The requirement of paragraph 2.1(b) of the Regulations is therefore met.

C. Registered or Used in Bad Faith

The Complainant alleges that the Respondent must have known the WAHL trademarks when the Respondent registered the disputed domain names, which allegation has not been challenged by the Respondent. Further, the Respondent used the disputed domain names without rights or legitimate interests as found above in Section 6.B, and even by impersonating the Complainant by mimicking the official website with the likely intention of misleading Internet users to believing that they are ordering original products from the Complainant, which constitutes use in bad faith of the disputed domain names.

Such bad faith is further enhanced by the fact that it is undisputed that the disputed domain names previously resolved to the Respondent’s website under the Respondent’s domain name <wahlofficial.com>, which domain name, the Panel found, was ordered to be transferred to the Complainant pursuant to Wahl Clipper Corporation v. Thijs de Kiewit / WAHL?, Forum Case FA2105001947749 of June 22, 2021, with the disputed domain names currently resolving to another website. The Panel infers from these facts that the Respondent’s use in bad faith of the disputed domain names apparently was not stopped when another, nearly identical domain name of the Respondent was found to be violating the UDRP and was transferred to the Complainant, which further supports a finding of bad faith, and that the Respondent is involved in a pattern of registration of domain names with the intent of taking advantage of the similarities with the Complainant’s trademarks (c.f. Google LLC v. Suneel Kumar, WIPO Case No. DNL2019-0053).

Consequently, the Panel is satisfied that it has been sufficiently established that the disputed domain names were registered and used in bad faith and that the requirement of article 2.1(c) of the Regulations has also been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain names <wahlofficial.nl> and <wahltondeuses.nl> be transferred to the Complainant.

Alfred Meijboom
Panelist
Date: August 26, 2021

¹ In view of the fact that the Regulations are to an extent based on 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 may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).