WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hair Club for Men, Ltd., Inc. v. Junaid Syed, Hair Club USA

Case No. D2019-2025

1. The Parties

The Complainant is Hair Club for Men, Ltd., Inc., United States of America (“United States”), represented by Lott & Fischer, PL, United States.

The Respondent is Junaid Syed, Hair Club USA, United States.

2. The Domain Name and Registrar

The disputed domain name <hairclubusa.com> (the “Disputed Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2019. On August 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 21, 2019, 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 the 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 September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on October 11, 2019. 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 isa corporation organized and subsisting under the laws of the state of Florida, United States. Since 1979, the Complainant has extensively promoted its business and services for hair care and beauty services, including hair salon services, hair weaving and replacement services, and surgical hair restoration, among others. The Complainant offers its services through more than 1,100 hair loss experts operating in 119 locations throughout the United States, Canada and Puerto Rico.

The Complainant owns multiple trademark registrations in the United States, including:

The above trademarks will hereinafter collectively be referred to as the “HAIR CLUB Mark”.

The Complainant’s widespread use, advertising, and promotion of the HAIR CLUB Mark for over 40 years establishes registered and common law rights in the HAIR CLUB Mark pursuant to Policy 4(a)(i). The Complainant has acquired valuable goodwill in the HAIR CLUB Mark, which has always been, and continues to be, in full force and effect.

The Complainant has owned the domain name <hairclub.com> since 1995, which resolves to its official website at “www.hairclub.com”, and which operates to promote and describe its beauty and hair restoration services.

The Respondent originally operated a business as Hair Club USA, LLC, a limited liability company organized and subsisting under the laws of the state of Florida, United States. On March 27, 2019, the Respondent changed its name to USA Hair Clinic, LLC. The Respondent offered hair replacement and surgical hair restoration services, the identical services offered by the Complainant. The Respondent offered its services under the “Hair Club” name and HAIR CLUB Mark and used the <hairclubusa.com> Disputed Domain Name to resolve to its website.

The Disputed Domain Name was registered on September 3, 2016. According to archived screenshots provided by the Complainant as an annex to the Complaint, the Disputed Domain Name initially resolved to “www.hairclubusa.com”, a website that offered hair replacement and surgical hair restoration services, the identical services offered by the Complainant on its official website. Also according to a screenshot provided by the Complainant as another annex to the Complaint, as of August 13, 2019 the Disputed Domain Name resolved to a landing page that stated: “This Account has been suspended. Contact your hosting provider for more information.” As of the writing of this Decision, the website is no longer available online, and the Disputed Domain Name does not resolve to any web page or have any content whatsoever.

Upon learning of the Respondent’s use of the Disputed Domain Name, on February 25, 2019, the Complainant’s counsel sent a letter to the Respondent demanding, interalia, the transfer of the <hairclubusa.com> Disputed Domain Name to the Complainant. The Respondent refused to transfer the Disputed Domain Name. On at least four additional occasions, on February 27, March 5, March 7 and March 15, 2019, the Complainant’s counsel repeated its demand for the transfer of the Disputed Domain Name to the Complainant. On February 27, 2019, the Respondent wrote to the Complainant’s counsel in response to its demand that the Disputed Domain Name be transferred. The Respondent stated that it did not use the Disputed Domain Name for any business, and that no bank account or store with signage bearing the Disputed Domain Name existed. As referenced above, although the Respondent eventually changed the name of its company on March 27, 2019 to USA Hair Clinic, LLC, the Respondent refused to transfer the Disputed Domain Name to the Complainant.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademarks;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):

(i) the Disputed Domain Name is 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 Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

It is uncontroverted that the Complainant has established rights in the HAIR CLUB Mark based on its longstanding use as well as the trademark registrations for the HAIR CLUB Mark in the United States. The Disputed Domain Name consists of the HAIR CLUB Mark followed by the geographic or descriptive term “usa” and the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of geographic or descriptive terms. See F. Hoffman-La Roche AG v. Globex International, WIPO Case No. D2006-1008. The mere addition of the country abbreviation “usa” to the Complainant’s HAIR CLUB Mark does not prevent the confusing similarity between the Disputed Domain Name and the Complainant’s HAIR CLUB Mark. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (a domain name incorporating a well-known trademark combined with a geographically descriptive term is confusingly similar to the trademark); Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438 (the addition of the term “korea” in <ikea-korea.com> does not prevent the domain name from being confusingly similar to the Complainant’s trademark).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its HAIR CLUB Mark. The Respondent does not run any business under the name “Hair Club” or “Hair Club USA” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy.

First, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s HAIR CLUB Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name to resolve to a website that provided identical services as that of the Complainant’s official website indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known HAIR CLUB Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).

Second, the Disputed Domain Name was registered 30 years after the registration of the Complainant’s HAIR CLUB Mark and 38 years after the Complainant first began to use the trademark in commerce. The Panel finds that the Respondent had the Complainant’s HAIR CLUB Mark in mind when registering the Disputed Domain Name. Bad faith may be found where the Respondent knew or should have known of the Complainant’s registration and use of the HAIR CLUB Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. The Respondent’s initial use of the Disputed Domain Name to resolve to a website that offered beauty and hair services almost identical to the services offered by the Complainant as well as use of the Disputed Domain Name that incorporated the Complainant’s HAIR CLUB Mark makes it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks). In this case, the Panel concludes that the Respondent is using the Disputed Domain Name for an illegitimate purpose that demonstrates knowledge of the Complainant’s trademark rights and a bad faith intent to register and use the Disputed Domain Name.

Third, the Respondent’s registration and use of the Disputed Domain Name that is confusingly similar to the Complainant’s well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).

Finally, the Respondent’s bad faith can also be inferred from its lack of reply to the multiple demand letters, except for one, sent by the Complainant’s counsel prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001 0210.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Name <hairclubusa.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: October 14, 2019