1.1 The Complainant is Farouk Systems, Inc. of Houston, Texas, United States of America (“US”), represented by McGlinchey Stafford PLLC, US.
1.2 The Respondent is luluqingqing luluqingqing of Fujian, China. 2. The Domain Names and Registrar
2.1 The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2013. On April 9, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 10, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the Domain Names.
3.2 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”).
3.3 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 April 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2013.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 8, 2013. 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
4.1 The Complainant is a company incorporated in Texas. The extent of the Complainant business activities is unclear. However, it claims to be in the business of selling CHI branded hair irons and hair dryers.
4.2 The Complainant is the registered owner of various US registered trade marks that comprise or incorporate the term “CHI”. The marks include:
(i) trade mark no. 2660257 for the word mark CHI in respect of Electric Hair Curling Irons in class 9 filed on June 19, 2000 and registered on December 10, 2002; and
(ii) trade mark no. 2660257 for the word mark CHI in respect of Electric Hair Curling Irons in class 9 filed on May 7, 2004 and registered on June 20, 2006.
4.3 The identity and nature of the Respondent is unclear although it appears to be a person or entity based in China.
4.4 Both of the Domain Names were registered on November 11, 2012.
4.5 As the time of the Panel’s appointment the Domain Name was being used for a website that that offered for sale what purported to be CHI branded and at least one other brand of hair straightener. The text “ULTRA CHI®” appeared prominently on the web page and at the bottom of the page were the words “copyright@2004 - 2012 .Chi Straightener .CO. LTD. Powered By Great-C”. By the date of this Decision that website was no longer was displayed. No website has operated from the Domain Name since at least the date of the Panel’s appointment. 5. Parties’ Contentions A. Complainant
5.1 The Complainant refers to a large number of US registered trade marks that either comprise or incorporate the word “CHI”. The Complaint then cites a large number of Domain Name cases in support of the claims that the addition of “great” to “CHI” in the case of the Domain Name and the addition of “flatstraightener” (a word that is said to “relate to the Complainant’s business”), does not preclude a finding of confusing similarity with its marks.
5.2 In alleging confusing similarity, the Complainant also contends that:
“The domain uses the CHI mark, and the web site purports to sell CHI Flat Irons, CHI Hair Dryers, and other brands of flat irons and hair dryers. The site specifically uses the CHI mark for flat straighteners. As of March 22, 2013, does not display a functioning web site.”
5.3 The Complainant denies that the Respondent has used the Domain Names in connection with a bona fide offering of goods and services or has been commonly known by the Domain Names, asserting that “the term ‘CHI’ has been recognized in the marketplace as identifying [the Complainant’s] goods and services”.
5.4 The Complainant further claims that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names. It asserts:
“In fact, the Respondent’s web site purports to sell Farouk Systems’ CHI irons and hair dryers and thus is solely for commercial gain. Farouk Systems is in the business of selling CHI irons and hair dryers, and thus the Respondent’s sites are in direct competition with Farouk Systems. Customers searching for authentic CHI irons may be mislead and diverted to the Respondents' sites instead of Farouk Systems’ site. Farouk Systems only sells its products through authorized channels to guarantee authenticity. The Respondent is not an authorized distributor or reseller, and therefore it is unknown and doubtful that the Respondent’s customers are purchasing authentic products. The sale of counterfeit products harms Farouk Systems’ brand value. Nothing on the Respondents' sites disclaim any affiliation with Farouk Systems.“
5.5 So far as the bad faith is concerned the Complainant contends that the Domain Names have been intentionally used to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.
5.6 The Complainant also states that “[i]nasmuch as the Respondents’ contact information as submitted to its Registrar is false, false identifying information is evidence of bad faith.” It then goes on to cite various cases in support of that submission. It is unclear whether the Complainant is alleging that the Respondent’s contact information is false, is likely to be false, or might be false. B. Respondent
5.7 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Names can be most sensibly read as the term “CHI”, combined with the words “great” or “flat straightener” and the “.com” generic top-level domain (“gTLD”). The Complainant is the owner of a number of trade marks that comprise the word “CHI”. Given the way that the term “confusingly similar” is understood under the Policy (as to which see Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227), the Panel finds that each of the Domain Names is confusingly similar to a trade mark or marks in which the Complainant has rights. As the Complainant rightly contends, the addition of the words “great” or “flat straightener” does not prevent a finding of confusing similarity in this case.
6.5 In the circumstances the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.6 The Panel agrees with the Complainant that to use a domain name to take unfair advantage of confusion arising out of the similarity between the domain name and the complainant’s marks with a view to drawing Internet users to his website, is not a use in connection with a bona fide offering of services. Indeed, the Panel would go further and suggest that such facts provide a positive evidence that no right or legitimate interest exists (see Premier Farnell Corp. v. BlueHost. com, BluehostInc / Newark del Peru S. A.,WIPO Case No. D2010-2111).
6.7 Further, there is obviously no right or legitimate interest in the use of another’s trade mark in a domain name to sell counterfeit goods.
6.8 Unfortunately, the Complainant has brought very little evidence to support its contentions as how the Domain Names are being used. There is a claim that the Domain Name is being used for a site that purports to sell “CHI Flat Irons, CHI Hair Dryers, and other brands of flat irons and hair dryers”. However, no screen shots are provided of any website to substantiate that assertion.
6.9 Further, although the Complainant asserts that it is “doubtful that the Respondent’s customers are purchasing authentic products”, the basis for that claim appears to be another assertion that it “only sells its products through authorized channels to guarantee authenticity” and the fact that the Respondent is not an authorized distributor. The structure of a complainant’s distributor network might in many cases support an allegation that goods are counterfeit, but one would ordinarily expect a somewhat fuller explanation than that given by the Complainant as to why this is the case.
6.10 Nevertheless, ultimately the Panel has reached the conclusion that the Respondent has no right or legitimate interest in the Domain Names. Although the Complainant has failed to provide evidence in support of its contention as to the form of the website operating from the Domain Name, a website of the sort described by the Complainant continued to operate at the time that this Panel was appointed. In particular, the Panel accepts that this website has promoted products which do not use the CHI mark.
6.11 Given this, even if the CHI branded products advertised on the website were and are genuine (an issue on which the Panel makes no finding), this would not help the Respondent. The prevailing view among UDRP panels is that the sale of genuine products from a domain name that incorporates the trade mark used for those products can only provide a legitimate interest in the domain name where certain conditions are satisfied. These conditions include that only genuine trade mark goods are sold from that domain name (see paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
6.12 Further, another one of the conditions to be satisfied is that the relevant website “accurately and prominently disclosing the registrant’s relationship with the trademark owner” (again see paragraph 2.3 of the WIPO Overview 2.0). This does not appear to have been done by the Respondent in this case. Indeed, the format of the website, including the prominent use of the CHI mark and the reference in a copyright notice to a company name (i.e. “Chi Straightener .CO. LTD”), suggests that the Respondent has not only failed to disclose its relationship (or lack of relationship) with the Complainant, but has actively sought to impersonate the Complainant.
6.13 That still leaves the Domain Name, which as far as the Panel can tell has never been used in connection with an active website. Nevertheless, for reasons that are described in greater detail under the heading of bad faith below, the Panel is persuaded that this Domain Name was registered by the Respondent with the same intentions and as part of the same scheme as the registration of the Domain Name. In the circumstances, the Respondent can have no more a legitimate interest in the Domain Name than it has in the Domain Name. Indeed, it is likely to have such an interest in the Domain Name, which inherently and unambiguously refers to the products of the Complainant in a way that the Domain Name does not.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
6.15 As has already been explained in greater detail under the heading of rights and legitimate interests earlier on in this decision, it is reasonably clear that the Domain Name has been used by the Respondent for a website that advertises and sells CHI branded products (which may or may not be counterfeit) and other branded products.
6.16 Given this, the Panel accepts the Complainant’s contention that the Domain Name has been intentionally used to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s as to the source, sponsorship, affiliation, or endorsement of that website or products on that website. Such activity falls within the scope of paragraph 4(b)(iv) of the Policy and as such constitutes circumstances indicating bad faith use. As the Domain Name was registered only a few months ago, it seems likely that the Domain Name was also registered with that use in mind.
6.17 Indeed, even if there were any doubts as to the motives of the Respondent in registering the Domain Name, they would be put to rest by the fact that it was registered on the same day as the Domain Name. Regardless of whether the Domain Name could possibly have been registered for some legitimate purpose unconnected with the Complainant, the registration on the same day of the Domain Name, which can only sensibly be read as making a reference to the Complainant’s products, makes it clear that it was with the Complainant’s mark in mind that the Domain Name was also registered.
6.18 Although there is no evidence before the Panel of the Domain Name ever having been used, it seem likely given the date of registration that it was registered by the Respondent as part of the same scheme as the Domain Name. Accordingly, it seems more likely than not that the Domain Name was registered with the intention in some way of taking unfair advantage of the Complainant’s trade mark rights. Indeed, the nature of the Domain Name is such that it is difficult to see how that Domain Name might be used in a manner which would not involve bad faith (as to which see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 as elaborated upon by the three person panel in Mr. Talus Taylor, Mrs. Anette Tison v. Vicent George Warning/ Fayalobi Interaction Management, WIPO Case No. D2008-0455). Certainly no good faith use of that Domain Name has been suggested by the Respondent.
6.19 In the circumstances, the Complainant has shown to the Panel’s satisfaction that both Domain Names have been registered and used in bad faith and the Complainant has thereby made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For 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.
Matthew S. Harris
Sole Panelist
Date: May 15, 2013
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