WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. tom Case No. D2009-1324 1. The Parties
The Complainant is Farouk Systems, Inc. of Houston, Texas, United States of America, represented by Greenberg Traurig, LLP of the United States of America.
The Respondent is tom of New York, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names , , , , and are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2009. On October 8, 2009, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain names. On October 10, 2009, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 14, 2009, the Center transmitted an email to the parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the due date, however the Center continued to transmit all case-related Center communications in both English and Chinese. 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 October 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on November 17, 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.
The Panel notes the Complainant's request that English be the language of the proceeding, and further that the Respondent, although provided with copies of the Center's case-related documents in both English and Chinese, has not elected to respond to either this request or to the Complaint. Based on the evidence in the case file, the Panel also notes that the Respondent at one time used English exclusively to promote and sell products on the websites at some of the disputed domain names. In view of the above, it is not foreseeable that the Respondent will be prejudiced if English is adopted as the language of the proceeding. Consequently, the Panel will render its decision in English. 4. Factual Background
The Complainant, Farouk Systems, Inc., is a manufacturer and vendor of high quality professional hair care products, which are sold in over 60 countries worldwide.
The Complainant has been in the hair care business for nearly two decades, during which it has become one of the recognized leaders in the beauty and hair care industry.
The Complainant owns a hair care product line in the name CHI, which includes electric hair curling irons, electric hand held hair dryers, electric flat irons, electric hair straightening irons and electric hair styling irons. The Complainant has been using the CHI product line continually since the beginning of 2001.
The Complainant is the owner of multiple trademark registrations for the mark CHI around the world. For example: United States of America (“US”) trademark registration No. 2660257 – CHI, with the filing date of June 19, 2000; US trademark registration No. 3107769 – CHI, with the filing date of May 7, 2004; US trademark registration No. 3426769 – CHI, with the filing date of November 30, 2004; Canadian trademark registration No. TMA700970 – CHI, with the filing date of March 11, 2003; CTM registration No. 004457594 – CHI, with the filing date of May 26, 2005; and others.
The CHI trademark is well-recognized by the general public, and has generated significant goodwill. As a result of extensive use and publicity, the Complainant contends that the CHI trademarks have become famous.
The Respondent registered the disputed domain names on the following dates: was registered by the Respondent on September 14, 2009; was registered by the Respondent on September 20, 2009; was registered by the Respondent on September 20, 2009; was registered by the Respondent on September 14, 2009; was registered by the Respondent on September 14, 2009; was registered by the Respondent on September 23, 2009.
The disputed domain names and used to resolve to a website, which promoted the sale of numerous hair care products displaying or bearing the Complainant's mark CHI. Currently, all six disputed domain names resolve to error pages. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the CHI trademark, owned by the Complainant, seeing that they contain the trademark in its entirety.
The Complainant further argues that it has exclusive rights to the CHI trademark and that this trademark is widely recognized with the Complainant and the Complainant's operations. Furthermore, the Complainant argues that it has not licensed or permitted the Respondent to use the CHI mark.
The Complainant further argues that the Respondent did not provide any evidence demonstrating its right to use the CHI mark, or a bona fide intent to use the disputed domain names in connection with an offering of goods or services.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin, and the public is likely to believe that the Complainant has authorized or endorsed the Respondent.
The Complainant further argues that the Responded promoted unauthorized and/or counterfeit goods under the and domain names, which compete with the Complainant's goods. The Complainant argues that this behavior is evidence of the Respondent's efforts to disrupt a competitor and constitutes bad faith.
The Complainant further argues that the Respondent was using the disputed domain names to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark.
The Complainant further argues that the Respondent was aware of its existence and of its CHI mark and product at the time it registered the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The CHI trademark is registered in the name of the Complainant in various jurisdictions around the world. For example, US trademark registration No. 2660257 – CHI, with the filing date of June 19, 2000; US trademark registration No. 3107769 – CHI, with the filing date of May 7, 2004; US trademark registration No. 3426769 – CHI, with the filing date of November 30, 2004; Canadian trademark registration No. TMA700970 – CHI, with the filing date of March 11, 2003; CTM registration No. 004457594 – CHI, with the filing date of May 26, 2005; and others.
The disputed domain name differs from the registered CHI trademark only by the additional wording “hair USA shop”.
The disputed domain name differs from the registered CHI trademark only by the additional word “heats”.
The disputed domain name differs from the registered CHI trademark only by the additional wording “heat shop”.
The disputed domain name differs from the registered CHI trademark only by the additional wording “salon tools”.
The disputed domain name differs from the registered CHI trademark by the additional wording “tool shop”.
The disputed domain name differs from the registered CHI trademark only by the additional hyphen and wording “US-shop”.
The above mentioned domain names integrate the Complainant's trademark CHI in its entirety, as a dominant element, with words that do not serve sufficiently to distinguish or differentiate these disputed domain names from the Complainant's CHI trademark.
Previous WIPO panels have ruled that the mere addition of a non-significant element do not sufficiently differentiate the domain name from the registered trademark: “the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark, has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
The addition of the generic top-level domain (gTLD) “.com” to the disputed domain names does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since use of a TLD is technically required to operate domain names and it does not serve to identify the source of the goods or services provided by the registrant of a disputed domain name.
The result is that the Complainant has shown that the above disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds the Complainant has established such a prima facie case, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CHI trademark, or a variation thereof. The Respondent has not submitted a Response and has not provided any evidence to show it has any rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
A review of the websites currently operating under the disputed domain names indicates that the disputed domain names lead to parked webpages and refer to an error page. “The lack of active use of the domain name does not as such prevent a finding of bad faith, and may indeed in certain circumstances support such finding … The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include the Complainant having a well-known trademark, no Response to the Complaint, and the impossibility of conceiving a good faith use of the domain name” Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Based on the evidence presented on the use of the CHI trademark, the widely known nature of this mark and the Respondent's failure to use the disputed domain names in any meaningful way, the Panel can draw the inference that the Respondent does not have any rights or legitimate interests in the disputed domain names and that the disputed domain names were registered and used in bad faith.
In addition, the Complainant submitted evidence which shows that the Respondent has registered the disputed domain names after the Complainant registered its trademarks. According to the evidence filed by the Complainant, the Complainant has owned registrations for its CHI trademark since the year 2002. It is suggestive of the Respondent's bad faith that the trademarks, owned by the Complainant, were registered long before the registration of the disputed domain names (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use if the respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on the web site or location to which the disputed domain name is resolved to. As it appears that, at one time, the Respondent was using two of the disputed domain names to sell potentially competing and/or counterfeit goods, the Respondent may also have been engaged in activities in violation of paragraph 4(b)(iv).
The disputed domain names are confusingly similar to the Complainant's trademark. Previous WIPO panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a famous registered trademark may, in certain circumstances, be evidence of bad faith under paragraph 4(b)(iv) of the UDRP (see E, Inc v. Ult. Search Inc.,WIPO Case No. D2001-1319).
In light of the Complainant's distinctive registered trademark, the Panel finds that the registration of the disputed domain names which are confusingly similar to the Complainant's mark shows the Respondent is intent to operate a website offering similar goods and by doing so, creating the likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant. The use the Respondent had made of two of the disputed domain names for quasi-identical goods to the ones the Complainant manufacturers and produces constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain names 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 names , , , , and be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: November 28, 2009
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