WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Whois Protection Case No. D2009-0515 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 Whois Protection of Georgetown, Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2009. On April 21, 2009, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba J a request for registrar verification in connection with the disputed domain name. On April 22, 2009, CSL Computer Service Langenbach GmbH dba J 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 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2009.
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 April 13, 2003.
As at April 7, 2009, a printout from the Respondent's website shows that the Respondent was using the disputed domain name to sell numerous haircare products bearing the Complainant's mark CHI. The Respondent is not authorised to sell or offer for sale the Complainant's genuine hair-care products. Also on the website is reference to products which do not originate from the Complainant. There are hair care products manufactured and distributed by others. Such products of others are, e.g., FHI, Redken, Suncare or AHI. The website includes links to other websites on which the Complainant's products are sold. None of these other sites has received any authorization from the Complainant to sell its products.
The Complainant has received recently at least five FHI branded hair appliances from consumers seeking repair or replacement. 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., goods 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. The Respondent is not entitled to avail itself of the defences under Paragraph 4(c) of the Policy.
The Respondent's redirection of Internet users away from the Complainant's website in order to interest users in goods and services not authorised, provided, sponsored or supported by the Complainant supports the finding of registration and use in bad faith (see the GEICO case). The Respondent's website is used intentionally to create a likelihood of confusion with the Complainant's mark by making specific references to the Complainant's products and marks and offering the Complainant's products which are either unauthorized or counterfeits and the products of third parties not related to the Complainant. B. Respondent
The fact that the Respondent did not submit a response does not automatically result in a decision in favour of the Complainant. The failure of the Respondent to file a response results in the Panel drawing certain inferences from the Complainant's evidence. The Complainant may accept all reasonable and supportive allegations and inferences following from the Complaint as true. See Charles Jourdan Holding AG v. AAIM; WIPO Case No. D2000-0403 and the Adela case (supra). 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 Ltd; 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. Naxza.command;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” and “iron” increase 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 to 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.
Having found that the Respondent has no rights or legitimate interests in the disputed domain name and none of the matters under paragraph 4(c) of the Policy have been raised by the Respondent, the Panel holds that the second criterion under paragraph 4 of the Policy has been proved. C. Registered and Used in Bad Faith
The only difficulty in the way of the Complainant in achieving a finding of registration in bad faith is that the disputed domain name was registered six years ago. Whilst there is ample evidence of continuing use in bad faith, registration in bad faith has to be proved separately. It is always difficult to prove when the complaint is laid a long time after the registration of the disputed domain name.
However, in the present case, in the absence of any Response and because the name of the Respondent indicates that it is a privacy site and a front for the real registrant, the blatant marketing of the Complainant's goods on the Respondent's website, inclines the Panel to infer bad faith registration.
The Panel finds that the Respondent must have registered the disputed domain name with actual knowledge of the Complainant's mark. The disputed domain name is a combination of the Complainant's trade mark, together with generic words indicating one of the Complainant's products.
The Respondent had the opportunity to explain why it registered the disputed domain name in 2003 incorporating the trade mark of the Complainant but has chosen not to file a Response.
The Panel finds that the Respondent is clearly using a confusingly similar domain name intentionally to attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark. Use under paragraph 4(b)(iv) of the Policy applies. Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 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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