WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Domain Administration Ltd. Case No. D2009-0440 1. The Parties
Complainant is Farouk Systems, Inc of Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is Domain Administration Ltd. of Los Angeles, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2009. On April 3, 2009, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, eNom, Inc. 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 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 Respondent of the Complaint, and the proceedings commenced on April 7, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 28, 2009.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on May 11, 2009. 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
Complainant is the owner of U.S. Trademark Registration Nos. 2, 660,257 and 3,107,769, both for the mark CHI. The former registration identifies electric hair curling irons while the latter identifies electric hand-held hair dryers. The earliest of these registrations issued on December 8, 2002 and claims first use as of January 18, 2001. The latter was filed on May 7, 2004, with a claim of first use dating to December 1, 2005 and a registration date of June 20, 2006.
The domain name was registered on January 6, 2004. 5. Parties' Contentions A. Complainant
Complainant asserts that it manufactures and sells professional hair care products sold in over 60 countries. Complainant asserts that its products include electric hair curling irons, electric flat irons, electric hair straightening irons, electric hair styling irons and electric hand-held hair dryers, all sold under Complainant's trademark CHI.
Complainant asserts that it does not sell these CHI branded products to Respondent, and that Respondent is not authorized to or licensed by Complainant to sell Complainant's products under the CHI trademark.
Complainant asserts that Respondent registered the domain name on January 6, 2004, and that the domain name has an in-line link to the website located at the URL “”. That website promotes for sale numerous hair care products from various manufacturers, as well as versions of Complainant's products which Complainant asserts are unauthorized and/or counterfeit. Complainant asserts that neither Respondent nor the owner or operator of the website at “” is authorized to sell or offer for sale Complainant's genuine hair care products under the CHI trademark.
Complainant asserts that the domain name is likely to cause confusion with Complainant's CHI trademarks, because a portion of the domain name is identical to Complainant's CHI trademark, and the remainder of the domain name consists of the word “irons”, which is the generic name for many of the hair products sold by Complainant under its mark. Complainant asserts that by combining Complainant's trademark with the generic word “irons,” Respondent has strengthened the appearance of a connection between Complainant's mark and Respondent's website and created a false commercial impression that Respondent is the owner of Complainant's CHI trademarks, or is an authorized distributor of Complainant's CHI products, and that the merchandise for sale on Respondent's website is authentic and genuine despite the fact that Complainant does not license or authorize Respondent to sell such products.
Complainant further asserts that Internet users who search for Complainant using its CHI registered marks may be directed to the domain name , creating a likelihood of confusion as to whether Respondent is associated with, sponsored by or connected to Complainant when no such connection exists.
Complainant notes that over 40 different UDRP Panels have found Respondent to have registered and used in bad faith domain names which are confusingly similar to a trademark owner's registered trademark. Of these, Complainant cited to three decisions in which Respondent was found to have abusively registered domain names which combined a complainant's trademark with a generic term referring to the goods or services sold under that mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect to the domain name because Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use Complainant's CHI trademark or the disputed domain name. Complainant asserts that it has never licensed Respondent or authorized Respondent to sell Complainant's products or use Complainant's CHI mark in connection with the sale of any goods or services. Complainant asserts that Respondent is not an authorized dealer of Complainant's products and did not have Complainant's permission to apply for the disputed domain name.
Complainant asserts that the domain name was registered and is being used in bad faith because Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent's website or other online location by creating a likelihood of confusion with Complainant's mark. Complainant asserts that the inclusion of the word “irons” as part of the disputed domain name is evidence that Respondent was aware of Complainant's registered marks and the goods identified thereby, and supports a finding that the domain name was registered in bad faith. Complainant asserts that the use of a website with an in-line link to the disputed domain name which sells unauthorized or counterfeit versions of Complainant's goods is further indication that Respondent registered the domain name in bad faith. Complainant asserts that its federal registration constituted constructive notice of its trademarks. By registering the disputed domain name years after issuance of Complainant's registration no. 2,660,257, Complainant asserts that Respondent acted in bad faith.
Complainant asserts that Respondent intentionally created a likelihood of confusion with Complainant's marks by making specific references to Complainant's products and marks in its website name and offering Complainant's products or counterfeits thereof for sale through a website which was linked in-line to the disputed domain name. Finally, Complainant asserts that Respondent has a history of engaging in bad faith registration of domain names, as evidenced by the more than 40 UDRP decisions against it. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001.
However, the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation:
(i) Before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you, as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Policy, paragraph 4(c).
Where, as here, a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b). B. Identical or Confusingly Similar
The Panel agrees that the domain name is confusingly similar to Complainant's registered trademark CHI. Rather than serving to distinguish Respondent's domain name from Complainant's registered trademark, adding the generic term “iron” to the registered term CHI is likely to lead Internet users to believe that the domain name refers to the hair irons sold under Complainant's CHI trademark. See Government Employees Insurance Company (GEICO) v. Forum LLC,WIPO Case No. D2005-1131; Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. The Panel finds that Complainant has provided sufficient evidence to establish element 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant asserts, and Respondent has failed to rebut, that Respondent has no relationship whatsoever with Complainant; that Complainant has not licensed or authorized Respondent to use Complainant's trademarks; and that Respondent is not an authorized dealer of Complainant's products and has no permission to apply for any domain name incorporating Complainant's marks. Combined with the inferences this Panel may make as a result of Respondent's default herein, this Panel finds that Complainant has made a prima facie showing of bad faith which Respondent has failed to rebut. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1 and cases cited therein. As a result, Complainant has established element 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence satisfying paragraph 4(b)(iv) of the Policy, namely that by using the domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
In addition to the inferences to be drawn from Respondent's default in this proceeding, the Panel draws an inference that Respondent was well aware of Complainant's trademarks by the facts that it combined the descriptive word “irons” with Complainant's mark CHI; and that Respondent's website at the domain name has an in-line link to a website promoting and selling hair products, including those of Complainant (and possibly counterfeit versions of Complainant's products) and of its competitors.
While the Panel has no doubt that the foregoing facts are sufficient for it to conclude that the domain name in dispute was registered and used in bad faith, the fact that Respondent has been found to have abusively registered over 40 other domain names by prior panels would erase any such doubt as may have existed. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Dated: May 26, 2009
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