WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Domain Admin Ltd. Case No. D2009-0846 1. The Parties
Complainant is Farouk Systems, Inc. of Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, also of the United States.
Respondent is Domain Admin Ltd. of Los Angeles, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (“eNom”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 25, 2009. On June 26, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name. On June 26, 2009, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact information for registrant, and providing other details of the registration. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 July 2, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 23, 2009.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 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
Complainant owns and uses the trademark CHI for hair curling irons, hand-held hair dryers, and other professional hair care products. It owns two United States (“U.S.”) federal trademark registrations for the mark, one for curling irons and the other for hair dryers, the earlier of which, for curling irons, issued in 2002. Complainant offers its CHI products in over 60 countries and through its official website at “.”
The domain name was registered on January 6, 2004. The domain name is not currently active; however, it previously directed visitors to a website located at “,” which offers, inter alia, products identified by the CHI mark. 5. Parties' Contentions A. Complainant 1. The domain name is identical or confusingly similar to a mark in which Complainant has rights.
Complainant manufactures and sells professional hair care products in over 60 countries worldwide and is a recognized leader in the beauty and hair care industry. Complainant sells hair care products such as electric hair curling irons, electric hand held hair dryers, electric flat irons, electric hair straightening irons, and electric hair styling irons under its CHI trademark.
Complainant owns two U.S. federal trademark registrations for the CHI mark, Registration No. 2,660,257, issued December 8, 2002, for hair curling irons, and Registration No. 3,107,769, issued June 20, 2006, for electric hand-held hair dryers. Complainant has used the CHI mark on hair irons since at least as early as January 18, 2001. Complainant also owns numerous other trademark applications and registrations throughout the world for the mark CHI for various hair care products.
As a result of its use and registration of the CHI mark, Complainant has established significant good will in the mark, which is world famous for hair care products.
The domain name contains Complainant's distinctive and famous CHI mark. The remainder of the domain name is comprised only of the two generic words “flat” and “irons”, used to strengthen the appearance of a connection between the CHI mark and Respondent's website. 2. Respondent has no rights or legitimate interests in respect of the domain name.
Respondent registered the domain name on January 6, 2004. The domain name links visitors to the “” website, which offers for sale numerous hair care products, from numerous manufacturers, as well as the ability to purchase unauthorized and/or counterfeit versions of Complainant's products.
Neither Respondent nor the operator of the “” website are authorized or licensed by Complainant to sell CHI brand products. Complainant does not sell its CHI branded products to Respondent. Instead, Complainant believes that Respondent manufactures counterfeit products or is otherwise obtaining unauthorized and unapproved CHI products from third parties and then offering them for sale.
None of the above evidence, or any other available evidence, suggests that:
Respondent is using, or making demonstrable preparations to use, the domain name or a corresponding name in connection with a bona fide offering of goods or services.
Respondent has been commonly known by the domain name.
Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the CHI trademark.
To the contrary, the evidence proves that Respondent is using the domain name for commercial gain by diverting Complainant's customers or potential customers. 3. The domain name was registered and is being used in bad faith.
The domain name is confusingly similar to Complainant's registered mark.
Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
Respondent's addition of the generic terms “flat” and “iron” to Complainant's CHI mark shows that Respondent was aware of Complainant's registered marks and business, and the subsequent use of the site to sell unauthorized and/or counterfeit versions of Complainant's goods is indicative of registration and use in bad faith.
Further evidence of Respondent's bad faith registration is the registration in 2004, years after Complainant's United States use and registration of the CHI marks.
Respondent's sale of unauthorized and/or counterfeit CHI products using the domain name to reap financial benefits, as well as the inclusion of the generic terms “flat” and “iron to strengthen the perception of an authorized relationship between Respondent and Complainant, support a finding of registration and use in bad faith.
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. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove that:
(i) The domain name is identical or confusingly similar to Complainant's mark.
(ii) Respondent has no rights or legitimate interests in respect to the domain name.
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, (see Policy, paragraph 4(c)), as well as circumstances that may evidence a respondent's bad faith registration and use (see Policy, paragraph 4(b)).
Even if a respondent has not answered a Complaint, a default does not automatically result in a finding for the complainant. Rather, the complainant continues to have the burden of establishing that it is entitled to relief. The Panel may, however, draw such inferences from a respondent's default as it considers appropriate. See paragraph 14(b) of the Rules. A. Identical or Confusingly Similar
The disputed domain name is not identical to Complainant's mark. However, it includes the CHI mark in its entirety and follows it with the phrase “flat irons.” The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, but does not agree that such a finding is or should be automatic. Here, the addition of the generic term after the mark (as well as the addition of the generic top-level domain “.com”, which is not relevant for these purposes), does not differentiate or distinguish the domain name from Complainant's CHI mark, which remains the dominant portion of the domain name.
Accordingly, the Panel finds that Respondent's domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that Respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once a complainant makes prima facie case, a respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(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 consumers or to tarnish the trademark or service mark at issue.
Under the circumstances presented here, it does not appear that Respondent is engaged in any legitimate use of the domain name. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is known by the domain name and the use of the website to redirect visitors to another website that purports to offer other “CHI” products is not legitimate.
The Panel finds that Complainant has made a prima facie showing as to this element. Respondent, who has not replied, has not rebutted this showing.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
Under the Policy, Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraphs 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
Complainant's rights in the CHI mark predate Respondent's registration and use of the domain name. From the combination of the phrase “flat irons” with the mark CHI, the Panel infers that Respondent was actually aware of Complainant's mark and business at the time it registered the domain name.
Further, the Panel has already concluded that Respondent's use of the domain name was not in connection with a bona fide offering of goods or services.
Next, this Respondent has been involved in a multitude of UDRP proceedings in which the respective panels determined that the domain names at issue had been registered and used in bad faith. Finally, the Panel draws an adverse inference from Respondent's failure to respond to the Complaint.
Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the 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.
Debra J. Stanek
Sole Panelist
Dated: August 11, 2009
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