WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Farouk Systems, Inc. v. liming Case No. D2010-0031 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 liming of Jiangsu, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2010. On January 11, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On January 13, 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 14, 2010, the Center transmitted by email a notification to the parties regarding the language of the 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 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 20, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 9, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on February 10, 2010.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on February 16, 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, the Republic of Korea, Mexico, New Zealand, Norway, Panama, Singapore, South Africa, Taiwan, Province of China,Turkey, Argentina, and Brazil.
The disputed domain name was registered on November 11, 2009.
The website at the disputed domain name has been 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 trademark. 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 date of the disputed domain name.
The Complainant contends that the disputed domain name is confusingly similar to the trademark CHI in which the Complainant has rights. A portion of the disputed domain name contains a term that is identical to the Complainant's distinctive trademark CHI. The remainder of the disputed domain name (“ghd” and “shop”) is comprised only of generic words used to strengthen the appearance of a connection between CHI and the Respondent's website. Specifically, the disputed domain name suggests 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 name suggests 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 name, 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 name.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name 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 the disputed domain name. The Respondent is using the disputed domain name to 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. There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Finally, the Complainant contends that the disputed domain name was 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 name shows that the Respondent was aware of the Complainant's registered marks and business, and supports a finding that the disputed domain name was registered in bad faith. The Respondent's addition of a generic term to the Complainant's CHI mark, and subsequent use of the site 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 Complainant argues that further evidence of the Respondent's bad faith registration is the Respondent's registration of the disputed domain name years after the Complainant's use and registration of the CHI trademarks in the United States. Additionally, the Respondent's redirection of Internet users to its own website in order to interest those users in goods and services not authorized, provided, supported, sponsored, or endorsed by the Complainant supports a finding of registration and use in bad faith.
Moreover, the Respondent's website has been used to intentionally create 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 for the disputed domain name 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 language is the proceedings language. The Complainant mainly relies on the following arguments with references of prior UDRP decisions to support the request:
(1) The Respondent uses the English language to promote and sell its unauthorized and/or counterfeit CHI branded products. Thus, on a daily basis, the Respondent voluntarily conducts business in the English language.
(2) The Respondent advertises and accepts USD as the sole currency for payment of its unauthorized and/or counterfeit CHI branded products. Moreover, the prices provided in USD are “70%”, “72%”, “73%” and “off” of regular USD prices. Thus, the United States, with its predominant language of English, is the target of the Respondent's infringing activities, and to reach the Respondent's target audience the Respondent regularly and voluntarily conducts its business in the English language.
(3) It was indicated on the website at the disputed domain name that all of the Respondent's unauthorized and/or counterfeit CHI branded products “work(s) in USA and Canada with 110 voltage. Converter can NOT be used”. None are advertised as having any other type of plug or capability of being used in any other country. Thus, the United States, with its predominant language of English, and Canada where the English language is widely used, are the targets of the Respondent's infringing activities.
(4) The Respondent states it provides free shipping “through USPS (if you live in US)”. The Respondent's use of the United States Postal Service shows that the Respondent is located in the United States and is targeting United States customers. As English is the dominant language in the United States the Respondent voluntarily and regularly uses services provided by the United States government that are provided in the English language.
In addition to the arguments and views canvassed by the Complainant, the Panel notes that:
On January 14, 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 agreement for the disputed domain name was Chinese, and provided the parties with detailed information concerning the language of the proceedings. The Respondent was therefore aware of the language of proceedings matters in the case and had an opportunity to make any comments or submissions it 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 proceedings in the present case would be a burden to the Complainant in terms of translation expenses, and would also cause undue delay in 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 name
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 trademark 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 produced 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 name is the CHI mark. The disputed domain name wholly incorporates 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 on balance that the disputed domain name , in which the CHI mark appears first, is confusingly similar to the Complainant's CHI mark, in which the Complainant has rights. The Panel notes that the letters “ghd”comprise the trademark of a third-party. Therefore, this finding, and indeed the entire decision, is without prejudice to any rights that may be asserted by the trademark owner of the trademark GHD. See Parrot S.A. v. Whois Service, Belize Domain WHOIS Service,WIPO Case No. D2007-0779. 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 name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name 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 name 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 name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of production thus 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 name under paragraph 4(c) of the Policy. For all the above reasons, the Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. 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 of the domain name was at one time being used by the Respondent to offer for sale numerous hair care products displaying or bearing the Complainant's mark CHI. The Panel notes that the website described one of the displayed products as “CHI Ceramic Flat Iron 1, Original Farouk Hair Straightener”, which contains the trade name “Farouk” of the Complainant. These indicate the Respondent's prior knowledge with respect to the Complainant, the Complainant's industry and trademarks rights. The deliberate attempt of the Respondent to register a domain name confusingly similar to the Complainant's trademark constitutes bad faith. The Panel further notes that the Respondent also used the Complainant's United States registered trademark CHI NANO to describe some of its products such as “CHI Blue Nano Flat Iron”, on its 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 website which once operated at 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 used the website at the disputed domain name to offer for sale both the Complainant's trademarked products and GHD branded products. The fact that the Respondent has used the domain name intentionally to trade on the fame of the Complainant's trademark to offer for sale competing products to the Complainant's products cannot constitute a bona fide offering of goods or services.
The Panel finds that by using the disputed domain name, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's 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 the Respondent's website or location or of a product or service on the Respondent's website or location.
In light of the above reasons, the Panel therefore finds that the disputed domain name has been registered and is being used in bad faith pursuant to the Policy. 7. Decision
The Panel notes that the disputed domain name includes what might be a trademark owned by a third party. 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. This transfer is ordered without prejudice to any third-party rights that may be asserted by the owner of trademark GHD.
Jacob (Changjie) Chen
Sole Panelist
Dated: March 2, 2010
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