WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems Inc. v. Sanjoy Nath Case No. D2009-0504 1. The Parties
The Complainant is Farouk Systems Inc. of Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Sanjoy Nath of Kalyani, West Bengal, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2009. On April 20, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 20, 2009, GoD, Inc. 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 April 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2009. On April 26, 2009, the Respondent filed with the Center, the first of a number of email communications which, in this Panel's view, cannot be considered to be a proper response in accordance with the Policy and Rules. These communications and the Complainant's reply thereto will be summarised in the statement of the Respondent's contentions in paragraph 5B to follow.
The Center appointed Sir Ian Barker as the sole panelist in this matter on May 28, 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
The Complainant is a Texas corporation which manufactures and sells professional hair-care products in over 60 countries worldwide. It has been in the hair-care business for nearly 20 years and has developed specialized product lines such as electric hair-curling irons, electric hand-held hairdryers, electric flatirons, electric hair-straightening irons and electric hair-styling irons. All of these are sold under the Complainant's trademark CHI.
The Complainant owns various United States (US) registered trade marks for CHI for use on its products, particularly for hair-curling irons and electric hand-held dryers. The Complainant has been using the mark CHI for hair-curling irons since 2001 and for hand-held hair dryers since 2005.
The Complainant is the owner of numerous other trade mark applications and registrations throughout the world for the mark CHI. The mark is used on various haircare products, including hair irons. Its first US trade mark registration was on December 8, 2002.
The Respondent registered the disputed domain name on February 12, 2009. As at March 31, 2009, printouts from the Respondent's website show that the Respondent was using the disputed domain name to sell numerous haircare products. The website shows that these products were branded with the Complainant's mark, CHI.
The Respondent is not currently selling CHI branded hair-irons through the website of the disputed domain name but is selling them through the domain name .
The Respondent has no authority from the Complainant to sell or deal in its products and has not been given any licence by the Complainant to use its trade marks. 5. Parties' Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant's registered marks CHI. The Complainant believes that the Respondent is selling counterfeit goods, i.e., purporting to be goods manufactured by the Complainant. Numerous cases were cited by the Complainant where UDRP panelists have found confusing similarity when the domain name incorporates a complainant's well-known mark along with identifying generic or slang terms.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and has never authorised the Respondent to use its mark in the disputed domain name or any other domain name. For the reasons covered extensively in the Complaint, the Respondent is not entitled to avail himself of the defences under Paragraph 4(c) of the Policy.
The Respondent registered the disputed domain name and is using it in bad faith. By using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to his website by creating the likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location of a product or service on the Respondent's website or location.
The use of the additional words in the disputed domain name shows that the Respondent was aware of the Complainant's business, particularly the use of the words “flat” “iron” and “shop “. The Respondent's sale of unauthorized and/or counterfeit CHI branded products through the disputed domain name to reap financial benefits, as well as the inclusion of the words “flat”, “iron” and “shop” in the disputed domain name strengthens the perception of an authorized relationship between the Respondent and the Complainant and supports a finding of registration and use in bad faith.
Making specific reference to the Complainant's products, its marks or its website name and offering those products through the website located at another domain is intentional conduct indicative of bad faith. B. Respondent
On April 26, 2009, the Respondent emailed the Center saying that he had already replied to “all questions of Mr. Anthony” (presumably, counsel for the Complainant). “i have already cleared to him that i have done a mistake. And after inform by Mr. Anthony, i immediately stopped the website. Even now go.daddy locked the domain name as well.”
“As well, Mr. Anthony asked me a few question and i replied to him. I told him repeatedly that i have done the mistake by chance and that i am ready to co-operate with you people. Can you please guide me what i have to do now.”
On April 27, 2009, the Center enquired of the parties whether they wished to settle and, if so, to advise the Center accordingly. On April 28, 2009, the Center sent a reminder to the Complainant, seeking to know whether it wished to negotiate a transfer or whether it wished to continue with the proceedings. On April 28, 2009, the Complainant's lawyers advised the Center that negotiations with the Respondent had been unsuccessful and that the Complainant had no choice but to proceed with the Complaint.
Proceedings were commenced on April 29, 2009, on which day the Respondent emailed the Center. He admitted, inter alia, that he was selling “the CHI replica hair straightener”. He said he was not the manufacturer, but was only trading. On May 20, 2009, he sent a further email to the Center acknowledging conversations with the Case Manager and with the Complainant's counsel. He stated that he had closed the website instantly after getting the first dispute email. He was not interested in the disputed domain name but it was locked by the Registrar. “Honestly i don't want to involve with this issue any more. Please do excuse me and close this case please”. He forwarded a copy of the email and sent it to the Complainant's counsel commenting on his dealing in goods bearing the Complainant's mark. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the Panel's view, the disputed domain name is confusingly similar to the Complainant's trade mark CHI. There is a long line of jurisprudence under the Policy which establishes the proposition that there is confusing similarity when the disputed domain name incorporates the complainant's widely known mark along with other identifying terms. Numerous cases can be cited, as were found in the Complainant's submissions.
In Adela Comércio de Embalagens Artesanais Ltda v. Adrenalin Rush, Inc.,WIPO Case No. D2007-0392 it was held that the domain name was confusingly similar to the complainant's ALEDA trade mark. Citing Pfizer Inc v. United Pharmacy Lt;WIPO Case No. D2001-0446 the panel in Adela found against the registrant because “generally a user of a mark may not avoid likely confusion by appropriating another's entire mark by adding descriptive or non-distinctive matter to it”.
In Government Employees' Insurance Co. (GEICO) v. Forum LLC; WIPO Case No. D2005-1131 the Panel held that the disputed domain names and were confusingly similar to the Complainant's registered GEICO service mark. While none of the many disputed domain names incorporated a mark identical to the registered mark, the panel found that all of the disputed domain names were visually and aurally similar. In Michelin Recherche et Technique S.A. v. N and;WIPO Case No. D2005-1107 the Panel held that the disputed name was confusingly similar to the complainant's registered BFGOODRICH trademark. The addition of the generic term “superchallenge” did not prevent confusion and may have increased the likelihood of confusion due to the Complainant's sponsorship of a race called The BF Goodrich Super Challenge”.
The Panel agrees with the Complainant's submission that, adopting the reasoning in the Michelin case, the Respondent's addition of the generic terms “flat”, “iron” and “shop” increases the likelihood of confusion because these words involve a direct connection to the Complainant's mark and refer especially to a product which is marketed worldwide by the Complainant.
There are numerous other cases referred to by the Complainant but the Panel considers that the circumstances of the present case amply justify a finding of confusing similarity between the disputed domain name and the Complainant's registered mark. The first criterion under paragraph 4(a) of the Policy has been proved. B. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. It is clear that there is no relationship between the Respondent and the Complainant and that the Respondent is selling goods, whether counterfeit or not, bearing the Complainant's trade mark. In the present circumstances, it is not for the Panel to speculate whether these goods are counterfeit or not are explained further below.
The Respondent does not claim to be an authorised dealer of the Complainant's goods. It is clear from his emails that he buys the goods from unnamed suppliers for on-selling to persons who purchase via the website.
Having found that the Respondent has no rights or legitimate interests in the disputed domain name, since none of the matters under paragraph 4(c) of the Policy have been raised by the Respondent or can be read from the record, the Panel holds that the second criterion under paragraph 4 of the Policy has been proved. C. Registered and Used in Bad Faith
It would be hard to find a clearer case where this Panel is able to infer bad faith registration. In February 2009, when the disputed domain name was registered, it is evident from the record, the Respondent was clearly attempting to attract for commercial gain internet users to its website or another online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
The inclusion of the additional words “flat”, “iron” and “shop” shows that the Respondent is aware of the Complainant's registered marks and business. This factor alone clearly supports the finding of bad faith registration and use. Moreover, the sale of unauthorized and or counterfeit products branded with the Complainant's mark supports a finding of registration and use in bad faith (see the GEICO decision).
Making specific reference to the Complainant's products and marks in the website name and by offering the Complainant's products, and/or counterfeits thereof, through a website located in another domain name operated by the Respondent is intentional conduct which is evidence of bad faith.
There is an overwhelming case for a finding of registration and use in bad faith. The Complainant has satisfied the third criterion. 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 the Complainant.
Sir Ian Barker
Sole Panelist
Dated: June 11, 2009
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