Complainant is Farouk Systems, Inc. of Houston, Texas, of United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is WWWEnterprise, Inc. of Bloomfield, New York, United States of America.
The disputed domain name <chifarouksale.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2009. On May 14, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On May 15, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 10, 2009.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on June 19, 2009. 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.
Complainant manufactures and sells professional hair care products, including electric hair curling irons, electric hand held hair dryers, electric flat irons, electric hair straightening irons and electric hair styling irons. Complainant markets and sells these products under the trademarks CHI and FAROUK.
Complainant owns numerous trademark registrations worldwide, including the following United States Trademark Registrations
No. 2,660,257, for the mark CHI, issued December 10, 2002, for use on hair curling irons, claiming a first use date of January 18, 2001;
No. 3,107,769, for the mark CHI, issued June 20, 2006, for use on electric hand-held hair dryers, claiming a first use date of December 1, 2005.
Complainant has also used for many years, and owns common law trademarks and trade names, in the marks FAROUK and FAROUK SYSTEMS for use with a wide variety of hair care products, including electric hair curling irons, electric hair styling irons, electric hair straightening irons, and electric hair flat irons. Complainant is the owner of pending U.S. Trademark Application Serial Nos. 77/202,137 for the mark FAROUK SYSTEMS for various hair care products, and 77/202,139 for the mark FAROUK for various hair care products.
Respondent registered the domain name <chifarouksale.com> on or about July 2, 2008. Printouts from the website located at that domain show that Respondent was offering for sale hair care products branded with the marks CHI and FAROUK.
Complainant contends that the disputed domain name is an amalgamation of Complainant's CHI and FAROUK trademarks, is identical and confusingly similar to Complainant's trademarks, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and used the domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Complainant has demonstrated that it owns rights in the trademarks CHI and FAROUK. The disputed domain name incorporates Complainants' CHI and FAROUK trademarks in their entirety. The addition of the generic word “sale” does not avoid a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademarks.
Respondent is not a franchisee, affiliated business or licensee of Complainant. Complainant has not authorized Respondent to register the disputed domain name or to otherwise use Complainant's marks.
Respondent is not and has not been commonly known by the disputed domain name. Respondent initially operated a website at the disputed domain name offering what appeared to be counterfeit CHI and FAROUK hair care products. After receiving Complainant's cease and desist letter dated April 24, 2009, Respondent subsequently revised its webpage to direct consumers to other online stores offering cosmetic products as well as to Respondent's own website, “www.wwwenterprise.com”, which directs consumers to additional websites offering cosmetic products. Many of these websites affiliated with Respondent's site offer for sale Complainant's CHI and FAROUK branded products. Complainant has never authorized Respondent to use Complainant's marks in connection with the sale or advertising of Complainant's products. There is no evidence to suggest that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has 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 of a product or service on the respondent's website or location.
Respondent was likely well aware of Complainants' trademark rights at the time of registering the disputed domain name. This is supported by the fact that Respondent is offering purported CHI and FAROUK branded products for sale on the website located at the disputed domain name. Respondent's re-direction of consumers to affiliated websites likely results in the linked websites paying Respondent a fee for each click-through. Thus, Respondent is improperly profiting from its unauthorized use of Complainant's trademarks in the disputed domain name.
The submitted evidence of Respondent's website at the disputed domain demonstrates that Respondent is deliberately trading off the goodwill associated with Complainants' marks and Internet traffic intended for Complainant's website. Such use evidences Respondent's bad faith.
The Panel finds that Respondent has registered and used the domain name in bad faith.
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 <chifarouksale.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: July 3, 2009