WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Danial Reed Case No. D2009-0880 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 of America.
Respondent is Danial Reed of Farmingdale, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with PlanetDomain Pty. Ltd. (“PlanetDomain”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 1, 2009. On July 2, 2009, the Center transmitted by email to PlanetDomain a request for registrar verification in connection with the domain name. On July 6, 2009, PlanetDomain 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 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 31, 2009.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 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 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 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 December 2002, having been filed in June 2000 with a date of first use of January 2001. Complainant offers its CHI products in over 60 countries and through its official website at “”.
The domain name was registered on July 31, 2002. The domain name is not currently active; however, it previously directed visitors to another website which purported to offer products identified by the CHI mark and other similar hair care products. 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 generic term “iron”, 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 in July 31, 2002, after Complainant began using its CHI mark and after Complainant had filed its application to register the CHI mark. In 2007, the domain name linked visitors to third party website that offers for sale numerous hair care products, from numerous manufacturers, as well as offering unauthorized and/or counterfeit versions of Complainant's products.
Neither Respondent nor the operators of the third party websites 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 is using its mark to redirect visitors to third party web sites that offer counterfeit versions of its products or are otherwise obtaining unauthorized and unapproved CHI products and then offering them for sale. Complainant believes that Respondent generates “click through” revenue from those third party sites.
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 Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.
Respondent's addition of the generic term “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 Respondent's registration of the domain name in 2002, after Complainant had begun use of the mark in the United States use, after it had filed its application to register the CHI trademark, and after Complainant had established substantial goodwill in its mark.
Further, in March 2009, Complainant sent a cease and desist letter to Respondent objecting to its registration and use of the domain name. Respondent did not respond.
Finally, Complainant has received from consumers at least five hair irons sold under a brand offered by one of the third parties advertised on Respondent's website with requests that Complainant repair or replace them, despite the fact that they are not Complainant's products. B. Respondent
Respondent did not reply to 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 a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the domain name; and
(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 the 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 domain name is not identical to Complainant's mark. However, it includes the CHI mark in its entirety, followed by the term “iron”. 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. Here, the addition of a 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.
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 the domain name by making a prima facie showing that Respondent lacks rights or legitimate interests that is not rebutted by Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, 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.
While Complainant asserts that it had actually acquired rights in its CHI marks before Respondent registered the domain name, it provides no actual evidence in support of this assertion. Complainant's U.S. federal trademark registrations did not issue until after Respondent had registered the domain name.
However, on this record, there is no reason to believe, from the WhoIs record or otherwise, that Respondent is known by the domain name.
It also appears that Respondent was using the domain name to provide links to third party sites offering hair care products in competition with Complainant or offering counterfeit or unauthorized versions of Complainant's products. Such a use is not legitimate and further, it establishes the connection between the domain name and Complainant's mark and curling irons and other hair care products. Taken with Respondent's failure to submit a Response, those facts give rise to certain adverse inferences regarding Respondent's rights or legitimate interests in the domain name. These factors weigh in favor of finding that Respondent's offering is not bona fide.
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, paragraph 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 web site 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).
Despite the fact that Complainant did not provide evidence establishing that its rights in the CHI mark predate Respondent's registration and use of the domain name, it is not unreasonable, under the circumstance presented here, to impute to Respondent actual knowledge of Complainant's mark and business at the time he 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.
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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: August 25, 2009
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