Complainant is Farouk Systems, Inc. of Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is Zemg Network, William Robinson of Daytona, Florida, United States of America.
The disputed domain name <pinkchiiron.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2010. On January 15, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 18, 2010, eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 21, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 23, 2010. The Center verified that the Complaint together with the amendment to 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 January 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 26, 2010.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on March 3, 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.
Complainant owns and uses the trademark CHI for hair curling irons, hand-held hair dryers, and other professional hair care products. Complainant has rights in the CHI trademark in many countries, including ownership of the following two United States trademark registrations for the CHI mark: Registration No. 2,660,257, issued December 8, 2002, for hair curling irons, and Registration No. 3,107,769, issued June 20, 2006, for electric hand-held hair dryers.
The disputed domain name was registered on April 9, 2009. There is little visible content at the web page to which the disputed domain name currently resolves.1
Complainant avers that it manufactures and sells professional hair care products in over 60 countries worldwide and is a recognized leader in the beauty and hair care industry. Complainant avers that, under the CHI trademark, it sells hair care products such as electric hair curling irons, electric hand held hair dryers, electric flat irons, electric hair straightening irons, hair coloring, and other hair care products.
Complainant alleges that it has used the CHI mark on hair irons since at least as early as January 18, 2001, thereby establishing significant good will and fame in the mark.
Complainant contends that the disputed domain name is confusingly similar to the registered CHI marks and that Respondent is selling unauthorized or counterfeit goods as “authentic” CHI products.
Pointing out that the disputed domain name <pinkchiiron.com> contains Complainant's “distinctive and famous” CHI mark, Complainant notes that the remainder of the domain name is comprised only of the generic terms “pink” and “iron.” Complainant contends that Respondent deliberately uses these generic terms to strengthen the appearance of a connection between the CHI mark and Respondent's website and to confuse consumers.
Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant alleges that it has no relationship with Respondent and has never authorized Respondent to use its mark in the disputed domain name or any other domain name. Moreover, Complainant contends, Respondent is not commonly known by the disputed domain name.
Complainant alleges the following in support of its contentions that Respondent registered and is using the disputed domain name in bad faith:
(1) By using the disputed domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating the likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's website, or of a product or service on Respondent's website;
(2) Respondent's use of the additional generic words in the disputed domain name shows that Respondent was aware of Complainant's business;
(3) Respondent's sale through his website of unauthorized and/or counterfeit CHI branded products as well as the inclusion of the words “pink” and “iron” in the disputed domain name are indicative of bad faith registration and use; and
(4) Respondent's redirection of Internet users away from Complainant's website by the use of a domain name, or “interesting an Internet user who arrives at Respondent's website in error in services which compete with Complainant” supports a finding of registration and use in bad faith.2
Complainant also avers that:
“Respondent was contacted by Complainant in August, 2009, and as a result, Respondent was placed on notice of his violation of Complainant's rights. Respondent subsequently shut-down the website at the Disputed Domain Name, but refused to transfer the Disputed Domain Name to Complainant. Instead, in early 2010, Respondent reactivated the website at the Disputed Domain Name and resumed selling and offering for sale his unauthorized and/or counterfeit CHI® branded hair irons.”3
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not reply to Complainant's contentions.
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address listed in the WhoIs record for the disputed domain name, but the courier company indicated that the notification was not deliverable because Respondent had moved from that address without forwarding information. The Center also notified Respondent by using an email address provided by the Registrar in its verification response to the Center, but the electronic notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrant to the registrar as listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent.
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
Although the disputed domain name <pinkchiiron.com> is not identical to Complainant's trademarks, the Panel agrees that Respondent's domain name is confusingly similar to Complainant's CHI trademark.
Panels disregard domain name suffixes in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The domain name in dispute incorporates Complainant's CHI trademark in its entirety, adding only the descriptive words “pink” and “iron.” The Panel finds that Respondent's addition of these descriptive terms does not negate the confusion created by Respondent's complete inclusion of the CHI trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.4
The Panel agrees with Complainant that the addition of the descriptive terms instead increases the risk of confusion experienced by Internet users because the disputed domain name implies that Respondent is offering Complainant's goods. E.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered trademark of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complaint exhibits show web pages to which the disputed domain name apparently routed on January 14, 2010. The pages list for sale products including “Pink CHI Iron,” “CHI Flat Iron,” “CHI Nano Iron,” and “CHI Turbo Iron.” As the exhibits show, Respondent promotes direct product sales through Respondent's website. Therefore, Respondent is making a commercial use of the disputed domain name and not a non-commercial or fair use.
In the absence of a Response, the Panel accepts as true Complainant's allegations that Respondent has no authorization or license to use Complainant's trademarks. The Panel also accepts Complainant's uncontested allegation that Respondent is not known by the disputed domain name.
The Panel agrees with Complainant that Respondent is seeking to attract Internet users through Complainant's marks for Respondent's own commercial purposes. The Panel therefore finds that Respondent's use of the disputed domain name demonstrates Respondent's lack of a legitimate non-commercial interest in, or fair use of, the domain name. See e.g., Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784. The Panel also finds that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant's prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
At the time of Respondent's registration in 2009, Complainant's trademark had been registered and used for several years in the United States. Respondent's statement on its website that it is selling “CHI® 100% AUTHENTIC PRODUCTS” is clear evidence that Respondent was aware of Complainant's CHI mark. Respondent's choice to add the generic word “iron” to Complainant's CHI mark to make up the disputed domain name also demonstrates Respondent's awareness of Complainant and its trademark rights. The Panel finds therefore that Respondent deliberately adopted the CHI trademark as a part of its domain name to create confusion and attract Internet users to its website for commercial gain.
The Panel concludes that Respondent registered the disputed domain name in bad faith; the sale of products on Respondent's website that bear names which incorporate Complainant's registered trademark also supports a finding of bad faith use.
The Complaint alleges that the products offered on Respondent's website are in fact unauthorized and/or counterfeit products. The Panel accepts these uncontested allegations as true. The Panel also infers that the products sold through the disputed domain name (which incorporates Complainant's CHI mark) compete with Complainant's products. Such activity constitutes bad faith use. Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784 (citing Google, Inc. v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240; Casio Keisanki Kabushiki (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088); DaimlerChrysler Corporation and DaimlerChrysler Service North America LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, (citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031). 5
Respondent's absence of a response to the Complaint and its failure to maintain current contact information as required by its registration agreement provide further support for the Panel's finding of bad faith.6
The Panel concludes therefore that, in addition to having registered the disputed domain name in bad faith, Respondent is also using the domain name in bad faith.
Consequently, the Panel concludes that the requirements of the third element of Policy Paragraph 4(a) are fulfilled.
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 <pinkchiiron.com> be transferred to Complainant.
Jeffrey D. Steinhardt
Dated: March 9, 2010
1 The website at present simply displays a link to an ftp quota; further content is not publicly available. The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
2 The quoted passage is a fragment from the panel's ruling in Government Employees Insurance Company (GEICO) v. Forum LLC, WIPO Case No. D2005-1131.
3 The Complaint nowhere adds detail to its description of the communications of August 2009. The Complaint, however, attaches a cease and desist letter earlier sent in July 2009 to eNom, Inc. and Whoisguard. In response to the July communications, “legal support” at the registrar “NameCheap.com” and Whoisguard service identified Respondent's contact information for further correspondence.
4 Several previous UDRP panels have also found that the addition of common terms to the CHI mark is not sufficient to negate confusing similarity between the domain names and Complainant's mark.
5 In support of its allegations of bad faith use, Complainant relies heavily on the panel decision in GEICO, supra. In this Panel's view, the practice of linking to third parties was a significant factor in the GEICO panel's finding of bad faith. That factor is missing in this case. Like GEICO, supra, however, Respondent in this case has, as the GEICO panel wrote in examining bad faith, also sought to “divert[ ] business directly” by misdirecting Internet users to Respondent's own website.
6 The Complaint provides insufficient detail about alleged communications with Respondent in August 2009. Thus, the Panel cannot rule on Complainant's contention that Respondent's failure to cease using or transfer to Complainant the disputed domain name following those communications is further evidence of Respondent's bad faith.
Since the Panel grants transfer on other grounds, it is also unnecessary to consider the Complaint's bare allegations that the CHI mark is famous or well known.