WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems Inc. v. Alexander Santos Case No. D2009-0523 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 Alexander Santos of Hamilton, Ontario, Canada. 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 21, 2009. On April 22, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 22, 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 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 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 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 hair care products, including hair irons. Its first United States trade mark registration was on December 8, 2002.
The Respondent registered the disputed domain name on October 14, 2008. As at March 31, 2009, printouts from the Respondent's website show that the Respondent is marketing the disputed domain name to sell hair care products. The website shows that some of these products were branded with the Complainant's mark CHI.
The Respondent's website includes numerous links to other websites in which the Complainant's products are allegedly sold. Neither the Respondent nor any of its websites are authorised to sell or offer to sell the Complainant's genuine hair care products. The Complainant's own website is not one of the links identified on the Respondent's website.
On April 7, 2009, the Complainant's lawyers sent a “cease and desist” letter to the Respondent which was ignored. 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 – 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. 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” and “iron”. The Respondent's sale of unauthorized and/or counterfeit CHI branded products in the disputed domain name to reap financial benefits, as well as the inclusion of the words “flat” and “iron” in the disputed domain name and subsequent use of the site to sell unauthorized and/or counterfeit versions of the Complainant's goods is indicative of bad faith registration and use.
The Respondent's redirection of Internet users away from the Complainant's website by the use of a domain name or interesting an Internet user who arrives at the Respondent's website in error in services that compete with those of the Complainant supports the finding of registration and use in bad faith (see the GEICO case, infra). The Respondent's website is used intentionally to create a likelihood of confusion with the Complainant's mark. 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 therefrom the Complaint as true. See Charles Jourdan Holdings AG v. AAIM,WIPO Case No. D2000-0403 and the Adela case (cit infra). 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 well-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 and by adding descriptive or non-distinctive matter to it”.
In Government Employees' Insurance Company (GEICO) v. Forum LLC,WIPO Case No. D2005-1131, the Panel held that the disputed domain names , and among others 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,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, supra, the Respondent's addition of the generic terms “flat”, “iron” and “shop” 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 present case amply justifies 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 on the present record 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. It is however not for the Panel to speculate whether these goods are counterfeit or not.
Having found that the Complainant has made a prima facie case (to which the Respondent has not responded), 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 has 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
In the Panel's view, the inference in favour of a finding of bad faith registration and use is overwhelming. The Respondent must be taken to have known of the Complainant's trade mark which is used to market its hair care products. The use of the words “flat” and “iron” in combination with the Complainant's marks indicate a deliberate choice by the Respondent to avail itself of the Complainant's mark and to attempt to attract Internet users to the site in order to sell merchandise purportedly emanating from the Complainant. This is a clear case of cybersquatting for commercial gain and there is no doubt that the Complainant has proved the third criterion of the Policy. 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 8, 2009
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