WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems Inc. v. Nash Case No. D2009-1618 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 Nash of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2009. On December 1, 2009, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain name. On December 8, 2009, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. On December 8, 2009, the Center transmitted an email to the parties in both 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. The Center has verified that the Complaint satisfies 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 proceeding commenced on December 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent's default on January 6, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on January 14, 2010. 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 A. The Complainant
The Complainant is a United States (“US”) company and the owner of registrations for trade marks comprising the word CHI in the United States of America and in numerous jurisdictions worldwide, including in China, where the Respondent is based (“the Trade Marks”). B. The Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain name was registered on September 29, 2009. 5. Parties' Contentions A. Complainant
The following facts are alleged by the Complainant in the Complaint and have not been disputed by the Respondent.
The Complainant manufactures and sells high quality professional hair care products which are sold under the Trade Marks in over 60 countries worldwide.
(1) The Disputed Domain Name is Confusingly Similar to the Complainant's Marks
The Complainant began using and registered the Trade Marks long before the disputed domain name was registered.
The Respondent has not been authorised or licensed by the Complainant to register the disputed domain name or to sell or distribute products branded with, or by reference to, the Trade Marks.
The generic terms “usa” and “factory” comprised in the disputed domain name do not serve to distinguish the disputed domain name from the Trade Marks.
(2) The Registrant has no Rights or Legitimate Interests in the Disputed Domain Name
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 the Trade Marks or to register the disputed domain name. The Complainant has not authorised or licensed the Respondent to sell the Complainant's products or use the Trade Marks in connection with the sale of any goods or services.
The website to which the disputed domain name is linked (“the Website”) offers for sale unauthorised versions of the Complainant's products and/or counterfeit reproductions of the Complainant's products.
The Respondent has not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent has been commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the Trade Marks.
(3) The Respondent Registered and is Using the Disputed Domain Name in Bad Faith
By using the disputed domain name, the Respondent has intentionally attempted to attract Internet users for commercial gain, by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Website.
The inclusion of the additional words “usa” and “factory” in the disputed domain name supports a finding that the disputed domain name was registered in bad faith.
The Respondent's use of the Website to sell unauthorised and/or counterfeit versions of the Complainant's goods is indicative of registration in bad faith.
The Respondent must have had actual or constructive knowledge of the Complainant's rights in the Trade Marks as the disputed domain name was registered years after the Complainant's first use and registration of the Trade Marks. B. The Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Respondent is using the English language to promote and sell its unauthorised and/or counterfeit products on the Website. Thus, on a daily basis, the Respondent voluntarily conducts business in the English language;
(2) The Respondent advertises and accepts U.S. dollars as the currency for payment of its unauthorised and/or counterfeit products;
(3) The Respondent has a physical address located in the United Kingdom where English is the predominant language;
(4) The Respondent states on the Website that its products “only work in USA and Canada with 110 voltage. DO NOT use in foreign countries with voltage converter”. Thus the United States and Canada and their predominant languages of English are the targets of the Respondent's infringing activities; and
(5) The Respondent states on the Website that shipments are sent through the U.S. Postal Service. As U.S. Postal service is only available to a shipper if the shipper is located in the US, the Respondent must be located in the US.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
B, Inc. has sent to the Center a verification response confirming that the language of the Registration Agreement for the disputed domain name is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceedings.
Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceedings. 6.2 Decision
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(1) The disputed domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name comprises the CHI trade mark in its entirety. UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of the disputed domain name, the domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
The addition of the generic terms “usa” and “factory” does not serve to distinguish the disputed domain name in any way. In the present circumstances, these generic terms should be disregarded in determining the question of confusing similarity.
The Panel finds that the designation CHI is the distinctive part of the disputed domain name and the additional generic terms “usa” and “factory” do not diminish the confusing similarity between the disputed domain name and the Trade Marks.
The Panel therefore finds that the disputed domains name is confusingly similar to the Trade Marks, and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(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.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent's registration of the disputed domain name by over 9 years. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
The Complainant has asserted that the Website was used by the Respondent to market unauthorised, counterfeit goods. There can be no legitimate interest in the sale of counterfeits in such cases (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name to rebut the Complainant's prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore finds that the Complaints fulfill the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Website.
The Complainant has asserted that the Website offered for sale unauthorised and/or counterfeit goods under the Trade Marks and this assertion has not been rebutted by the Respondent. This is strong evidence of bad faith (Prada S.A. v. Domains for Life,WIPO Case No. D2004-1019).
The Panel therefore concludes that the Respondent's registration and use of the disputed domain name falls under paragraph 4(b)(iv).
At some stage after receipt of the Complaint, the Respondent changed the Website from a website offering for sale unauthorised or counterfeit products under the Trade Marks, to an inactive website. The Panel finds this conduct provides further evidence of bad faith.
It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that this amounts to additional grounds for finding bad faith on the part of the Respondent.
The failure of the Respondent to respond to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: January 20, 2010
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