WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. Kan Zhou Case No. D2010-0007 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 Kan Zhou of Shanghai, the People's Republic of China. 2. The Domain Names and Registrars
The disputed domain names ; ; are registered with GoD, Inc. 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 a request for registrar verification in connection with the disputed domain names. On January 7, 2010, GoD, Inc. 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 January 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 1, 2010.
The Center appointed Linda Chang as the sole panelist in this matter on February 5, 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.
Due to special circumstances, the Panel required an extension until March 1, 2010 to deliver the decision. The Center duly notified the parties of the new date on February 19, 2010. 4. Factual Background
The Complainant manufactures and sells professional hair care products which are sold worldwide. The Complainant has been in the hair care business for nearly two decades. The Complainant's products include 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, all of which are sold under the Complainant's trademark CHI, which is registered in various jurisdictions worldwide.
The Respondent registered the domain names ; ;
in September, April, May 2009, respectively. 5. Parties' Contentions A. Complainant Identical or confusingly similar
The Complainant claims that it owns the following United States (“U.S.”) trademark registrations:
- No. 2,660,257, issued December 8, 2002, for the CHI trademark for use on hair curling irons.
- No. 3,107,769, issued June 20, 2006, for the CHI trademark for use on electric hand-held hair dryers.
The Complainant contends that it has been using the mark CHI on hair irons since at least as early as January 18, 2001; on electric hand-held hair dryers since at least as early as December 1, 2005; on hair care products since at least as early as December 4, 2000; and on hair coloring preparations since at least as early as November 29, 2004.
The Complainant also contends that it is the owner of numerous other trademark applications and registrations throughout the world for the mark CHI for various hair care products, including hair irons. For example, Complainant asserts it is the owner of:
- Indian Trademark Application No. 1378048 in International Classes 3, 9, and 11;
- Australian Registration No. 936956 for the mark CHI in International Classes 9 and 11;
- Canadian Registration No. TMA 700790 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 Registration No. 301045269 for the mark CHI in International Class 9; and
- numerous other applications and registrations for the mark CHI in these and other countries such as Indonesia, Japan, Jordan, Korea, Mexico, New Zealand, Norway, Panama, Singapore, South Africa, Taiwan, Turkey, Argentina, and Brazil.
The Complainant contends that it began using CHI marks long before April 2009, and obtained U.S. trademark registrations prior to April 2009, and the Complainant has established significant goodwill in its CHI marks.
The Complainant contends that a portion of each of the disputed domain names contains a mark that is identical to Complainant's trademark, CHI. The remainder of the disputed domain names comprises one or more generic terms (“official,” “sales,” and/or “salon”) used to strengthen the appearance of a connection between CHI and Respondent's websites and to create the commercial impression that Respondent is the owner of the CHI mark and the goodwill associated therewith, and that the Respondent is an authorized distributor or the source of CHI branded products.
The Complainant contends that the Respondent is using an identical mark as part of the disputed domain names and that the disputed domain names are identical to its CHI mark as a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it. Respondent has no rights or legitimate interests in the disputed domain names
The Complainant contends that the Respondent is not authorized or licensed by the Complainant to sell authentic CHI branded products. The Complainant has no relationship with the Respondent and the Complainant has never authorized the Respondent to use the mark CHI, the disputed domain names, or any other domain name. The Complainant has not granted any license to the Respondent. Specifically, Complainant asserts that it has never authorized Respondent to sell the Complainant's products or use the Complainant's CHI mark in connection with the sale of any goods or services.
The Complainant also contends that one of the Respondent's disputed domain names links to a website that includes the ability to purchase unauthorized versions of the Complainant's products and/or counterfeit reproductions of Complainant's products, and details, reviews, and tips and advice related 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 mark.
Therefore, the Complainant submits it has established the second element of its claim that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Registered and used in bad faith
The Complainant contends that as a result of the Complainant's use and registration of its mark CHI, Complainant has established significant goodwill in its mark CHI through its extensive marketing and advertising efforts. Furthermore, the Complainant asserts that its mark CHI is world famous for hair care products.
The Respondent appears to have registered the disputed domain names at issue in April, May, and September 2009. The Complainant contends that during website visits in December 2009, it found that all hyperlinks from each of the webpages located at the domain names and resolve to webpages. The websites are used to sell numerous hair care products displaying or bearing the Complainant's marks. The Complainant contends that the Respondent, however, is not authorized to sell or offer for sale the Complainant's genuine hair care products or to use the Complainant's registered mark CHI in this manner.
The Complainant contends that consumers reviewing the Respondent's websites in which the Complainant's mark CHI is prominently displayed and used in the Respondent's disputed domain names 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 websites located at the disputed domain names. As the Complainant is not related to, affiliated with, a sponsor of, or connected to Respondent or Respondent's disputed domain names, and Respondent is not authorized to sell the Complainant's CHI branded products, consumers are likely to be confused into believing that the Complainant is related to, affiliated with, a sponsor of, or connected to the sources of the products offered by the Respondent.
The Complainant contends that by using the disputed domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion the 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 or location.
The Complainant asserts that redirection by a respondent of users away from a complainant's website by use of the domain name, or “interesting an Internet user who arrives at Respondent's website in error in services which compete with those of Complainant” supports a finding of registration and use in bad faith. The Complainant cites various cases in support of this assertion.
The Complainant contends that the Respondent's sale of unauthorized and/or counterfeit CHI branded products through the disputed domain names to reap financial benefits, as well as the inclusion of the generic terms “official,” “sales,” and “salon” in the disputed domain names to strengthen the perception of an authorized relationship between the Respondent and the Complainant, support a finding of registration and use in bad faith.
The Complainant contends that the Respondent's websites are used to intentionally create a likelihood of confusion with the Complainant's mark as to the affiliation of the website (e.g., by making specific references to the Complainant's products and marks in its website name, and offering the Complainant's products (and/or counterfeits) for sale through the websites to which the disputed domain names are immediately linked, or likely will be immediately linked. Such intentional conduct is evidence of bad faith.
The Complainant submits that it has established the third element of its claim that the Respondent registered and used the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all of the following in order for its contentions to be supported in the proceedings:
(A) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainants has rights; and
(B) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(C) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is the registered owner of the trade mark CHI in numerous jurisdictions. Compared to the trademark name, the domain names ; ; and completely reproduce the trademark with the only difference being the mere addition of the generic terms “official”, “sales” and “salon”, as well as a hyphen after “chi”. However, these terms are not sufficient to differentiate the domain name from the trademark name. Instead, the addition of the terms “official”, “sales” and “salon” is simply more likely to mislead Internet users into believing that the sites linked to the domain names are the official sites of the Complainant or in some way associated with the Complainant.
The domain names are therefore confusingly similar to the Complainant's trademark and the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights of Legitimate Interest
The Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interest in the disputed domain name. There is nothing in the record to suggest the Respondent's use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services, to suggest that it has been commonly known by any of the disputed domain names, or to suggest that the Respondent is making a legitimate noncommercial or fair use of any of the disputed domain names. Therefore, the burden shifts to the Respondent to prove otherwise. However, the Respondent has not responded to the Complainant's claims.
The Panel can only make its decision based on the information and evidence submitted before it and given the circumstances believes that the Respondent does not have any rights or legitimate interests in the disputed domain names.
The Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Information on the record indicates that the disputed domain names are linked to webpages used to sell numerous hair care products for commercial gain. The products sold display or bear the Complainant's mark. The records do not show that the Respondent is authorized to sell or offer for sale the Complainant's genuine hair care products or to use the Complainant's registered mark CHI in this manner. The Respondent did not respond to the Complainant's contentions.
Given the similarity between the disputed domain names and the trademark name, and the lack of any record suggesting the Respondent's rights or legitimate interests in the disputed domain names, it is not unreasonable to believe that the Respondent registered and used the disputed domain name as a bad faith attempt to attract Internet users, for commercial gain, to its own website or other online location, by creating a likelihood of confusion 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. This falls directly under paragraph 4(b)(iv) regarding the Respondent's bad faith in registering and using a domain name.
The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a)(iii) 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.
Linda Chang
Sole Panelist
Dated: March 2, 2010
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