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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Farouk Systems Inc. v. Originalchi.com
Case No. D2007-1201
1. The Parties
The Complainant is Farouk Systems Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Originalchi.com, The People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <originalchi.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2007. On August 17, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 18, 2007, Go Daddy Software 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”), 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 August 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2007.
The Center appointed Adam Taylor as the sole panelist in this matter on September 25, 2007. 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 manufactures and sells professional hair care products in over 60 countries worldwide. The Complainant has been in the hair care business for nearly two decades. Its 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. The Complainant has been using the CHI mark on its hair care products since 2000.
The Complainant owns the following United States trademarks for the word “CHI”: No. 2,660,257 issued December 8, 2002, for use on hair curling irons, and No. 3,107,769, issued June 20, 2006, for use on electric hand-held hair dryers.
The Respondent registered the disputed domain name on June 16, 2005.
As at July 16, 2007, there was a website at the disputed domain name which was prominently branded “CHI flat iron”. The site offered for sale what were claimed to be the Complainant’s “Chi” hair care products, asserted that the products were covered by a warranty from the Complainant and advised users to contact the Complainant in relation to warranty claims and product returns.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant’s “Chi” branded products are extremely popular and represent a substantial portion of the Complainant’s revenue.
The Complainant has established significant goodwill in its CHI mark through its extensive marketing and advertising efforts. The mark is world famous for hair care products.
Part of the disputed domain name contains a mark that is identical to the Complainant’s distinctive and famous trademark CHI. The remainder of the domain name (“original”) is comprised only of a generic word which strengthens the appearance of a connection between the Complainant and the Respondent’s website and which creates the false commercial impression that the Respondent is the owner of the CHI mark.
The disputed domain name suggests that the Respondent is an authorized distributor of the Complainant’s products and/or that the Respondent is the “first” or “true” Chi manufacturer.
Rights or Legitimate Interests
The Complainant has no relationship with the Respondent and has never authorized or licensed the Respondent to use its mark.
The Respondent’s website includes details, reviews, and tips and advice related to the Complainant’s products, the ability to purchase unauthorized versions of the Complainant’s products and/or counterfeit reproductions of the Complainant’s products, and instructs users to contact the Complainant for product warranty and returns – all of which confuses consumers as to the ownership of the CHI mark as well as to the source of products bearing that mark.
No evidence suggests that the Respondent has made use of, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
No evidence suggests that the Respondent, whose identity is unknown, has been commonly known by the domain name. Rather, the evidence shows that the Respondent is trading off the Complainant’s registered marks by creating consumer confusion with the Complainant’s well known trademark.
No evidence suggests that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the mark. On the contrary, the evidence proves that the Respondent is using the domain name for commercial gain by diverting the Complainant’s customers or potential customers.
Registered and Used in Bad Faith
By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other online 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.
The Respondent’s addition of the word “original” to 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.
Further evidence of the Respondent’s bad faith registration is registration of the domain name in 2005, years after the Complainant’s first use of its mark.
The redirection by the Respondent of users away from the Complainant’s website by use of the domain name or by interesting Internet users arriving at the Respondent’s website in error in services which compete with those of the Complainant” support a finding of registration and use in bad faith.
The Respondent’s sale of unauthorized and/or counterfeit Chi-branded products to reap financial benefits, as well as the inclusion of the word “original” in the disputed domain name 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 Respondent’s website is 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, meta description, and meta keywords, offering the Complainant’s products and/or counterfeits for sale, and falsely informing its users that the Complainant warrants and guarantees the unauthorized and/or counterfeit versions of the Complainant’s products sold through its website. Such intentional conduct is evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Disregarding the domain suffix, the disputed domain name differs from the Complainant’s registered trademark for CHI only by the addition of the generic and laudatory term “ORIGINAL”. This is insufficient to differentiate the domain name and trademark; rather, it enhances the connection.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Panel therefore finds that the Complainant has established the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc.,
WIPO Case No. D2003-0070.
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant. Such use of the disputed domain name could not be said to be bona fide. For reasons which in this particular case are convenient for the Panel to explain below, the fact (if it be the case) that the Respondent is a reseller of the Complainant’s products is insufficient to generate rights or legitimate interests in this disputed domain name.
There is no evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of the Policy.
C. Registered and Used in Bad Faith
It appears to the Panel that the Respondent has used the website at the disputed domain name either to resell the Complainant’s products or to sell counterfeit versions.
As to resale, the Panel refers to the response to question 2.3 of the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” on WIPO’s website: “Majority view: A reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
Here, the Respondent does not accurately disclose its relationship with the trademark owner. On the contrary, the use of “original” in connection with “chi” in the disputed domain name suggests that the Respondent has some sort of connection with the Complainant whereas it does not. The Respondent’s site itself enhances the likelihood of confusion by, amongst other things, prominent use of the Complainant’s mark on the homepage and false claims that the Respondent’s products are covered by warranties from the Complainant.
If the Respondent’s products are counterfeits, then the case against it is even stronger.
The Respondent has not come forward to deny that the Complainant’s assertions of bad faith let alone offer any explanation for its registration and use of the disputed domain name.
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Panel is satisfied that the Respondent has in all likelihood intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Panel therefore finds that the Complainant has established the third element of the Policy.
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 <originalchi.com> be transferred to the Complainant.
Dated: October 9, 2007