WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc v. VV CO LTD, Joe vv Case No. D2009-1689 1. The Parties
The Complainant is Farouk Systems, Inc of Texas, United States of America, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is VV CO LTD, Joe vv of Xiamen, the People's Republic of China. 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 (the “Center”) on December 10, 2009. On December 10, 2009, the Center transmitted by email to eNom. a request for registrar verification in connection with the disputed domain name. On December 10, 2009, eNom 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 December 14, 2009. On December 14, 2009 the Center received an email from the Respondent which was forwarded to the Complainant's representative in these proceedings. The email simply read as follows: “We will close the website asap”. The Center informed the Complainant that it had an option to request a suspension of the proceedings to explore a possible settlement with the Respondent. The Complainant did not request a suspension of the proceedings. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2010.
The Center appointed Francine Tan as the sole panelist in this matter on January 9, 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
The Complainant, incorporated in the State of Texas, United States of America, manufactures and sells professional hair care products which are sold in over 60 countries worldwide. These products include electric hair curling irons, electric hand-held hair dryers, electric flat irons, electric hair straightening irons, and electric hair styling irons, all of which are known and sold under the Complainant's trade mark, CHI. The Complainant has been in the hair care business for nearly two decades and is one of the recognized leaders in the beauty and hair care industry. The Complainant's official website for its popular CHI branded products is located at “”.
The Complainant owns US trade mark registrations for CHI for use in respect of hair curling irons and electric hand-held hair dryers. It is also the owner of numerous other applications and registrations throughout the world for the trade mark CHI (either alone or in combination with other terms or designs) for various hair care products including hair irons. These foreign registrations include one in the People's Republic of China in International Class 9. The Complainant has used the CHI trade mark on hair care products since December 2000.
The Respondent registered the disputed domain name on July 17, 2009. The
domain links to a website that offers for sale hair care products bearing the CHI trade mark. 5. Parties' Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Rules:
The Complainant asserts that the disputed domain name is identical or confusingly similar, as a portion of the disputed domain name contains the CHI trade mark in which the Complainant has rights. The remainder of the disputed domain name comprises a generic word (i.e. “-selling”) which is added to strengthen the appearance of a connection between the trade mark CHI and the Respondent's website, and to create a false commercial impression that the Respondent is the owner of the CHI mark and the goodwill associated therewith. The disputed domain name suggests that the Respondent is an authorized distributor of CHI branded products and that the merchandise offered for sale on the Respondent's website is authentic and genuine. It additionally suggests that the Respondent is the source of CHI-branded hair irons.
Customers who search the Internet for the Complainant may be directed to the Respondent's website, creating a likelihood of confusion. In addition, the public recognition and goodwill embodied in the Complainant's CHI trade mark is threatened and eroded by the Respondent's use of the disputed domain name.
With respect to paragraph 4(a)(ii) of the Rules:
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has no relationship whatsoever with the Respondent and neither has it permitted the Respondent to register a domain name incorporating the CHI trade mark or to use the trade mark in connection with the sale of any goods or provision of services. The Complainant asserts that the Respondent is not authorized or licensed by the Complainant to sell authentic CHI branded products. The Complainant does not sell its CHI branded products to the Respondent and the former believes that the Respondent is a counterfeit manufacturer of its CHI branded products or is otherwise obtaining unauthorized and/or unapproved CHI branded products from unknown third parties and then offering those for sale in competition with the Complainant.
Consumers viewing the Respondent's website in which the Complainant's trade mark CHI is prominently displayed and used in the disputed domain name are likely to be confused into believing that the Complainant is the source of, or is affiliated with or connected to the Respondent or the websites linked to the Respondent's website. The Respondent's use of the disputed domain name infringes upon the Complainant's rights in the trade mark CHI. Further, the Respondent's website includes details, reviews, tips and advice relating to the Complainant's products, all of which confuse consumers as to the ownership of the CHI mark as well as to the source of products bearing the CHI trade mark.
It is also asserted that there is no evidence which shows or suggests any of the following:
(a) The Respondent's use, or demonstrable preparations to use, of the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
(b) The Respondent has been commonly known by the disputed domain name.
(c) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the CHI trade mark.
Rather, the evidence shows that the Respondent is trading off the reputation of the Complainant's registered marks by creating consumer confusion with the latter's well known trade mark. Further, the registration of the disputed domain name years after the Complainant's use and registration of the CHI trade marks, and the specific references to the Complainant's products and marks in the Respondent's website, prove that the disputed domain name is being used to divert the Complainant's customers or potential customers.
With respect to paragraph 4(a)(iii) of the Rules:
The Complainant asserts that the disputed domain name was registered and is being used in bad faith The Respondent is intentionally attempting to attract and divert consumers 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. The inclusion of additional word “-selling” in the disputed domain name shows that the Respondent was aware of the Complainant's registered marks and business and supports a finding that the domain name was registered in bad faith. The sale of unauthorized and/or counterfeit CHI branded products through the disputed domain name to reap financial benefits support a finding of registration and use in bad faith. B. Respondent
The Respondent did not file a formal Response in accordance with the Rules but only indicated in the email of December 14, 2009 to the Center that it would “close the website asap”. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order 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 trade mark or service mark in which the Complainant has rights; and
(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
The Panel finds that the Complainant has rights in the trade mark CHI by virtue of its trademark registrations.
The Panel also finds that the domain name is confusingly similar to the Complainant's trade mark CHI. The disputed domain name replicates the Complainant's trade mark in its entirety. The addition of the descriptive word “-selling” does not serve to distinguish the domain name from the Complainant's trade mark. In fact, the Panel is of the view that the addition of the descriptive word “-selling” renders the disputed domain name akin or very similar in concept to the Complainant's domain name. It also suggests that the website relates to the sale/retail of CHI branded products.
The Panel therefore finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case showing the Respondent's lack of rights or legitimate interests in the disputed domain name. Once a complainant has made out a prima facie case, the respondent must come forward with evidence that rebuts the contentions made by the complainant. The Respondent in this case did not file any evidence in response nor refute the Complainant's assertions. Instead, by way of the email to the Center, the Respondent indicated that it would close the website as soon as possible. It is the Panel's view that the Respondent's conduct tends to support the Complainant's claim that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name has been registered and used in bad faith. It is obvious in this case that the Respondent was aware of the Complainant and/or of its CHI trade mark when it registered the domain name. The offer of sale of unauthorized and/or counterfeit CHI branded products as well as reviews and advice relating to these products on the Respondent's website shows that the registration of the disputed domain name was in bad faith. The Respondent was deliberately trading on the Complainant's goodwill and reputation, by attracting Internet users and diverting Internet traffic intended for the Complainant's website to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website (paragraph 4(b)(iv) of the Policy).
In this regard, earlier panel decisions have held that the registration of a domain name with the knowledge of the complainant's trademark registration may amount to bad faith. (See e.g RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242.) Further, when the knowledge has been alleged by the complainant and not denied by the respondent (as in this case) and what is sought to be accomplished by the use of the disputed domain name is a false association to the complainant and its trade marks, a finding of bad faith registration and use will be made (See Herbalife International, Inc v. Surinder S. Farmaha,WIPO Case No. D2005-0765).
Accordingly, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) 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.
Francine Tan
Sole Panelist
Dated: January 20, 2010
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