WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Chen Guoqiang Case No. D2010-0005 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 Chen Guoqiang of Fujian, the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain names and are registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2010. On January 5, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain names. On January 12, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 13, 2010, the Center transmitted by email to the parties a communication regarding the language of proceedings in both Chinese and English. On the same day, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the due date.
The Center verified that the Complaint together with the amended 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 January 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 15, 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 Farouk Systems, Inc, incorporated in the State of Texas, United States of America, manufactures and sells 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 and it is now one of the recognized leaders in the beauty and hair care industry.
The Complainant owns United States trademark registration no. 2,660,257, issued on December 10, 2002, for the CHI trademark for use on hair curling irons, and United States trademark Registration no. 3,107,769, issued on June 20, 2006, for the CHI trademark for use on electric hand-held hair dryers. The Complainant is also the owner of United States trademark registration no. 3,387,588 for the mark CHI NANO for various hair irons. The Complainant also owns numerous other trademark registrations throughout the world for the mark CHI for various hair care products, including hair irons. For example, it owns Australian registration no. 936956 for the mark CHI in international classes 9 and 11; Canadian registration no. TMA 700970 for the mark CHI; Chinese registration no. 3396005 for the mark CHI in international class 9; European Community trademark registration no. 4457594 for the mark CHI in international classes 9 and 16; Hong Kong SAR of China registration no. 301045269 for the mark CHI in international class 9; and numerous other applications and registrations for the mark CHI in other countries such as Indonesia, Japan, Jordan, Republic of Korea, Mexico, New Zealand, Norway, Panama, Singapore, South Africa, Taiwan Province of China, Turkey, Argentina, and Brazil.
The Respondent registered the disputed domain name on June 3, 2009 and on July 20, 2009.
The website at the domain name was one time used by the Respondent to offer for sale hair care products including hair irons, displaying or bearing the Complainant's registered mark CHI and other hair care products associated with the term “GHD”, which is a third party's brand.
The disputed domain name does not resolve to an active website at the date of this decision. 5. Parties' Contentions A. Complainant
The Complainant identifies itself as one of the recognized leaders in the beauty and hair care industry. Through extensive marketing and advertising efforts, the Complainant has established significant goodwill in its mark CHI, which is well-known for hair care products. The Complainant owns the United States trademark registrations no. 2,660,257 and 3,107,769 for the CHI trademarks, and the Complainant began using CHI marks long before the registration dates of the disputed domain names.
The Complainant contends that the disputed domain names are confusingly similar to the trademark CHI in which the Complainant has rights. Each of the disputed domain names contains a term that is identical to the Complainant's distinctive and famous trademark CHI. The remainder of the disputed domain names comprise one or more generic terms (“flat,” “iron,” “store,” and/or “online”) used to strengthen the appearance of a connection between CHI and the Respondent's websites. Specifically, the disputed domain names suggest that the Respondent is an authorized distributor and that the merchandise for sale on its website is authentic and genuine. Additionally, the Respondent's disputed domain names suggest that the Respondent is the source of CHI branded hair irons and that the Respondent is the source of hair irons bearing the CHI mark. Further, customers who search the Internet for the Complainant using the Complainant's CHI mark may be directed to the disputed domain names, creating a likelihood of confusion. In addition, the public recognition and goodwill embodied in the Complainant's CHI mark is threatened and eroded by the Respondent's use of the disputed domain names.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain names because the Complainant has never authorized the Respondent to use the mark CHI and the Respondent is not an authorized dealer or licensee of the Complainant's products or services. The respondent has also not been commonly known by any of the disputed domain names. The Respondent is using the disputed domain name offer for sale unauthorized and/or counterfeit products and cannot demonstrate any of the circumstances that are sufficient to prove its rights or legitimate interests under the Policy. The Complainant further argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.
Finally, the Complainant alleges that the disputed domain names were registered and used in bad faith.
The Complainant argues that the inclusion of the Complainant's trademark in addition to words or terms relating to the Complainant's goods in the disputed domain names shows that the Respondent was aware of the Complainant's registered marks and business, and supports a finding that the disputed domain names were registered in bad faith. The Respondent's addition of the generic terms to the Complainant's CHI mark, and subsequent use of one of the sites to sell unauthorized and/or counterfeit versions of the Complainant's goods, is indicative of registration in bad faith.
The Complainant alleges that the Respondent's sale of unauthorized and/or counterfeit CHI branded products through the disputed domain name to reap financial benefits supports a finding of registration and use in bad faith. The Respondent's inclusion of the Complainant's mark CHI in the domain name also creates a false association of the Complainant with other shown on the website products bearing or displaying the term “ghd”, which is the trademark of a third party, and this is also indicative of registration and use in bad faith. The Complainant argues that further evidence of the Respondent's bad faith registration is the Respondent's registration of each of the disputed domain names years after the Complainant's use and registration of the CHI trademarks in the United States.
The Complainant contends that the disputed domain name does not link to any currently active website, although it is likely that the Respondent will begin using this domain name to sell and offer for sale unauthorized versions of the Complainant's products and/or counterfeit reproductions of the Complainant's products. The Respondent's website was intentionally created to foster a likelihood of confusion with the Complainant's mark as to the affiliation of the website. Such intentional conduct is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
It is noted that the language of the registration agreement is Chinese and the default language of the proceedings would have been Chinese. The Complainant asserts that English should be the language of the proceedings and the Respondent would not be prejudiced if the English be language of the proceedings. The Complainant mainly relies on the following arguments with references of prior UDRP decisions to support the request:
(1) The Respondent used the English language to promote and sell its unauthorized and/or counterfeit CHI branded products. Thus, on a daily basis, the Respondent voluntarily conducted business in the English language.
(2) The Respondent advertised and accepted USD as the sole currency for payment of its unauthorized and/or counterfeit CHI branded products. Moreover, the prices provided in USD were “71%,” “75%,” “78%”, and “81%” “off” of regular USD prices. Thus, the United States, with its predominant language of English, was the target of the Respondent's infringing activities, and to reach the Respondent's target audience the Respondent regularly and voluntarily conducted its business in the English language.
(3) It was indicated on the website at the disputed domain name that several of the Respondent's unauthorized and/or counterfeit CHI branded products function solely on “110 volts US/Canada only”. None are advertised as having any other type of plug or capability of being used in any other country. Moreover, one of the Respondent's products is promoted as being “an American classic”. So the United States, with its predominant language of English, and Canada where the English language is widely used, were the targets of the Respondent's infringing activities.
In addition to the arguments and views canvassed by the Complainant, the Panel notes that:
On January 13, 2010, the Center notified the parties in both English and Chinese that the complaint had been submitted in English, that the language of the registration agreements for the disputed domain names was Chinese, and provided the parties with detailed information concerning the language of the proceedings. The Respondent was therefore aware of the language matters in the case and had an opportunity to make any comments or submissions if so wished, but it had not objected to the language of the proceedings at all by the due date.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort with each language, the expenses to be incurred, the possibility of delay in the proceeding in the event translations are required, and other relevant factors. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,WIPO Case No. D2003-0989. And it is recognized that the UDRP should provide an inexpensive and expeditious avenue for resolution of domain name disputes. See Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical applicance co. ltd.,WIPO Case No. D2008-0293.
Paragraph 11(a) of the Rules reserves to the Panel the authority to determine the proper language of the proceeding. In view of all the above circumstances and the Complainant's request, the Panel finds that there is no prejudice caused to the Respondent if the proceedings are conducted in English. The selection of the Chinese language as the language of the proceeding in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay to the proceedings.
The Panel determines that English shall be the language of the proceedings and shall therefore render the decision in English in accordance with paragraph 11 of the Rules. 6.2 The Panel's decision in relation to the disputed domain names
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the documents submitted by the Complainant, the Panel is satisfied that the Complainant has proven that it is the owner of the trademark CHI.
The distinctive part of the disputed domain names and is the word “chi”, which is identical to the Complainant's distinctive trademark CHI. As numerous prior UDRP panels have held, the fact that a domain name wholly incorporates a complainant's registered mark may be sufficient to establish identity or confusing similarity for purposes of the Policy, despite the addition of other words to such marks. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Lilly ICOS LLC v. The Counsel Group, LLC,WIPO Case No. D2005-0042.
The Panel finds that the addition of the generic terms “flat”, “iron”, “store” and “online” to the Complainant's mark in the disputed domain names does not prevent a finding of confusing similarity to the Complainant's trademark. Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark CHI, in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to register or use the trademark CHI.
The Complainant asserts that the Respondent is not commonly known by the disputed domain names. The Respondent is not making a legitimate noncommercial or fair use of any of the disputed domain names without intent for commercial gain to misleadingly divert customers or to tarnish the CHI trademark. No evidence suggests the Respondent's use of, or demonstrable preparation to use, the domain name or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such case the burden shifts to the Respondent to rebut the evidence. See among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia,WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
It is noted that the Respondent has failed to file a Response to prove its rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
Through extensive marketing and advertising efforts, the Complainant has established significant goodwill and reputation in its mark CHI.
The evidence shows that the website at the disputed domain name was at one time being used to offer for sale numerous hair care products displaying or bearing the Complainant's mark CHI, as well as products bearing the mark GHD, which is a competitive brand to the Complainant. This indicates the Respondent's prior good knowledge with respect to the Complainant, the Complainant's industry and trade marks rights. This deliberate attempt of the Respondent to register a domain name confusingly similar to the Complainant's trademark constitutes bad faith. The Panel notes that the Respondent also used the Complainant's United States registered trademark CHI NANO to describe some of its products on the website. This further supports the finding that the Respondent was aware of the Complainant's trademarks and business, and the disputed domain name was registered in the bad faith.
The Complainant has asserted that the disputed domain name was used by the Respondent to offer for sale unauthorized and/or counterfeit CHI branded products and this assertion has not been rebutted by the Respondent. The sale of counterfeited goods under the Complainant's trademark amounts to bad faith. See Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019.
The Respondent uses the disputed domain name to offer for sale both the Complainant's trademarked products and competing GHD branded products. Under the “About Us” header of the website, it provides a passage of introduction titled as “Why buy CHI and GHD straighteners from us?” listing reasons why to buy such products. The fact that the Respondent has used the domain name to intentionally to trade on the fame of the Complainant's trademark and to offer for sale competing products cannot constitute a bona fide offering of goods or services.
The Complainant claims that the domain name is not actively used and the Respondent has not contested it. As at the date of this decision, the disputed domain name is not actively used.
As discussed above, the Respondent had prior knowledge with respect to the Complainant, the Complainant's industry and trade mark rights and the Panel finds that the Respondent registered both of the disputed domain names subject to this case with the intent to target the Complainant. For this reason, the disputed domain name was registered in bad faith.
It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of a domain name being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; PRL USA Holdings, Inc. v. Liming Wang,WIPO Case No. D2009-1040. The Panel finds that the disputed domain name was used in bad faith, considering the factors that the CHI trademark is widely known, the Respondent made no response to the complaint and the possibility that it will be used for offering for sale of goods or services in bad faith.
In light of the above reasons, the Panel therefore finds that the disputed domain names have been registered and are being used in bad faith pursuant to 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 disputed domain names and be transferred to the Complainant.
Jacob (Changjie) Chen
Sole Panelist
Dated: March 1, 2010
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