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 David Fu of Putian, Fujian Sheng, the People's Republic of China.
The disputed domain name <mytopchi.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2010. On January 7, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. 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” 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 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2010.
The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on February 12, 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.
4.1. The Complainant has been in the hair care business for nearly two decades and has claimed to manufacture and sell high quality professional hair care products in over 60 countries worldwide. The Complainant has claimed that it is now one of the recognized leaders in the beauty and hair care industry and that its marquis 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, all of which are known as and sold under the Complainant's trademark CHI. The Respondent has not been authorised or licensed by the Complainant to sell authentic CHI branded products and the Complainant does not sell its CHI branded products to the Respondent and believes that the Respondent is a counterfeit manufacturer of the Complainant's CHI branded products. The Complainant's official website for CHI branded products is located at “www.chiretail.com” and has been registered in December 14, 2006.
4.2. The Complainant owns United States Trademark Registration No. 2,660,257 for the CHI trademark for use on hair curling irons which was issued on December 10, 2002 and United States Trademark Registration No. 3,107,769 for the CHI trademark for use on electric hand-held hair dryers, which was issued June 20, 2006. The Complainant has annexed to its Complaint a list of the trademarks, which include the following (all of which appear to be simple word marks):
- a copy of the certificate for United States Trademark Registration No. 2,660,257, together with printouts from the United States Patent and Trademark Office website regarding the assignment of this registration to the Complainant; and
- a copy of the certificate for United States Trademark Registration No. 3,107,769.
4.3. Although no evidence was provided to support its next claims, the Complainant has also contended that it is also the owner of several United States federal trademark registrations and applications including United States Trademark Registration Number 2,660,257 for CHI for “electric hair curling irons” and United States Trademark Registration No. 3,387,588 for the mark CHI NANO for various hair irons. The Complainant also claims to be the owner of numerous other trademark applications and registrations world-wide for the mark CHI, either alone or in combination with other terms or designs.
4.4. The Complainant has also claimed that it has been using the mark CHI on hair irons since at least as early as January 18, 2001; on electric hand-held hair dryers since at least as early as December 1, 2005; on hair care products since at least as early as December 4, 2000; and on hair coloring preparations since at least as early as November 29, 2004.
5.1 The Complainant contends that the Domain Name is identical or confusingly similar to a trademark in which it holds rights for the following reasons:
(i) As a result of the Complainant's use and registration of its mark CHI, the Complainant has established significant goodwill in its mark CHI through its extensive marketing and advertising efforts and the Complainant's mark CHI is world famous for hair care products.
On or about May 9, 2009, the Respondent had registered the domain name <mytopchi.com> which links to a website that offers for sale hair care products branded with the Complainant's registered mark CHI. The Respondent has been using the disputed domain name <mytopchi.com>, which includes the Complainant's United States marks CHI, to sell numerous hair care products displaying or bearing the Complainant's marks. However, the Respondent is not authorized to sell or offer for sale the Complainant's genuine hair care products.
As the Respondent is not authorized to sell the Complainant's CHI branded products, consumers are likely to be confused into believing that the Complainant is related to, a sponsor of, or connected to the sources of the products offered by the Respondent. The Complainant also produced evidence showing that one of the Respondent's customers was actually confused as to the sponsorship, connection, and affiliation of the disputed domain name <mytopchi.com> with the Complainant.
(ii) That the Respondent has registered the Domain Name and that a portion of this Domain Name contains a mark that is identical to the Complainant's distinctive and famous trademark, CHI, to which the Complainant has rights. The remainder of the Domain Name (“my” and “top”) is comprised only of generic words used to strengthen the appearance of a connection between CHI and the Respondent's website and, importantly, to create the false commercial impression that the Respondent is the owner of the CHI mark and the goodwill associated therewith.
(iii) The Complainant submits that the Domain Name gives the appearance that the Respondent is the source of CHI-branded hair irons as well as the source of hair irons bearing the CHI mark. The Complainant emphasises that the Respondent has never had rights to the CHI mark or rights to sell or offer for sale any products bearing the CHI mark.
(iv) That customers who search the Internet for the Complainant using the Complainant's protected CHI mark may be directed to the Domain Name and this would create a likelihood of confusion. The Respondent's website creates an immediate likelihood of confusion as to whether the Respondent is associated with, sponsored by, or otherwise connected to the Complainant when, in fact, the Respondent has absolutely no connection to the Complainant whatsoever. The Complainant cited previous decisions by other UDRP panels that have found confusing similarity when a domain name incorporates the complainant's well-known mark along with other identifying terms, or generic or slang terms. The Complainant has referred to Adela Comércio de Embalagens Artesanais Ltda v. Adrenalin Rush, Inc., WIPO Case No. D2007-0392 as one such case example.
(v) The Complainant has further argued that the Respondent's addition of the generic terms “my” and “top” increase the likelihood of confusion because the generic terms “my” and “top” imply a direct connection to the Complainant's protected CHI mark, which acts as a source identifier, or otherwise implies that the Respondent, and not the Complainant, is the owner and originator of the mark CHI, as well as all products bearing the mark CHI. The Complainant had relied upon the reasoning of Michelin Recherche et Technique S.A. v. Naxza.com, WIPO Case No. D2005-1107, which held that the addition of the generic terms “super” and “challenge” did not prevent confusion but may have increased the likelihood of confusion.
5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name for the following reasons:
(i) The Complainant has no relationship whatsoever with the Respondent and the Complainant has never authorized the Respondent to use the mark CHI, the Domain Name, or any other domain name.
(ii) The Complainant has not granted any license to the Respondent nor has it ever authorised the Respondent to sell the Complainant's products or use the Complainant's CHI mark in connection with the sale of any goods or services. The Respondent is not an authorized dealer or licensee of the Complainant's products or services and has no other permission to apply for any domain name incorporating the CHI trademark. The Complainant emphasises that the Respondent is not in any way affiliated with the Complainant and has not been authorized by the Complainant to use and register its trademarks, or to seek the registration of any domain name incorporating said marks.
(iii) The Complainant makes the point that the Domain Name links to a website that includes the ability to purchase unauthorized versions of the Complainant's products and/or counterfeit reproductions of the Complainant's products, and that these details, reviews, and advice related to the Complainant's products, would confuse consumers as to the ownership of the CHI mark as well as to the source of products bearing the CHI mark.
5.3 The Complainant, lastly, contends that the Domain Name was registered and is being used in bad faith for the following reasons:
(i) By using the Domain Name, the Respondent 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.
(ii) The inclusion of additional words in the Domain Name showed that the Respondent was aware of the Complainant's registered marks and business, and supports a finding that the Domain Name was registered in bad faith. Citing Government Employees Insurance Company (GEICO) v. Forum LLC, WIPO Case No. D2005-1131.
(iii) The fact that the Respondent's registration of the Domain Name in 2009 took place years after the Complainant's United States use and registration of the CHI trademarks further evidences the Respondent's bad faith registration.
(iv) The Respondent had intentionally attempted to attract Internet users for commercial gain. Its sale of unauthorized and/or counterfeit CHI branded products through the Domain Name to reap financial benefits shows bad faith.
(v) The Respondent's website intentionally creates a likelihood of confusion with the Complainant's mark. The offering of the Complainant's products (and/or counterfeited products) for sale through the website to which the Domain Name immediately resolves further shows intentional bad faith conduct.
The Complainant requests the Panel to order that the Domain Name be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6.1. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case could have raised a question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has employed reasonably available means to notify the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules.
6.2 The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below.
6.3 This Panel does not find any exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel deciding the dispute based upon the Complaint.
6.4 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy (see, for example, PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700). Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
6.5 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”. Therefore, in a case where a respondent fails to submit a response, a panel may draw negative inferences from that respondent's default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).
6.6 Where the Respondent chooses not to present any such evidence to dispute the claims of the Complainant, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the factual claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the disputed domain name. (See Caterpillar Inc. v. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc WIPO Case No. D2006-0808)
6.7 Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
6.8 In line with such provision, the Complainant must prove two limbs, i.e. it enjoys the trademark right; and the disputed domain name is identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
6.9 The Complainant has provided proof as to its registered trademark rights in CHI. Given this, the Panel has little difficulty in concluding that the Domain Name is confusing similar to a trademark in which the Complainant has rights. The Panel agrees with the Complainant that the addition of the generic terms “my” and “top” increase the likelihood of confusion because the generic terms “my” and “top” imply a direct connection to the Complainant's protected CHI mark and does have an impact on the likelihood of confusion.
6.10 In the circumstances, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
6.11 At the heart of the Complaint is the Complainant's contention that the Respondent has taken the name of the Complainant with a view to attracting Internet users to its website, where it offers the same or similar services as those offered by the Complainant. The Panel accepts that such activity does not provide the Respondent with a legitimate interest in the Domain Name.
6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
6.13 Paragraph 4(c) of the Policy provides examples of circumstances that shall demonstrate rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii). However, it is the prevailing consensus view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent is deemed to have no rights or legitimate interests in the domain name.
6.14 As previously held by other WIPO UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [c]omplainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001)
6.15 The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the Domain Name, or that the Respondent has made non-commercial or fair use of the Domain Name. The Respondent has also not used the Domain Name in connection with a bona fide offering of goods or services but instead has assertedly sold unauthorised or counterfeit products of the Complainant. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name which is confusingly similar to the Complainant's mark which showing has remained unrebutted.
6.16 Under the current record, the Panel takes the view that the Respondent has no rights or legitimate interests in the Domain Name and that the requirement of paragraph 4(a)(ii) is also satisfied.
6.17 The Panel accepts the Complainant's contention that the Respondent registered the Domain Name in the knowledge of the Complainant's business and its use of CHI. This is inherently probable given the fact that the Respondent only registered the Domain Name in 2009 after the Complainant has had many years of registration and use of CHI and in view of the subsequent use of the Domain Name.
6.18 Given this finding, the Panel also infers and accepts the Complainant's undisputed contention that the Respondent registered the Domain Name with a view to diverting Internet users with an interest in CHI hair products to its website for its own commercial gain.
6.19 Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) refers to use of a domain name to intentionally attempt to attract for commercial gain users to a website by creating a likelihood of confusion with the Complainant's mark as to the source of a website.
6.20 Given that the Respondent has failed to show (for the reasons set out under the heading of legitimate interests above) that it was using the Domain Name exclusively to deal in genuine CHI products and has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain users to its website by creating a likelihood of confusion with the Complainant's mark. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.
6.21 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. Considering the Complainant has established all three elements of the Policy, the Panel finds in favour of the Complainant.
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 <mytopchi.com> be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Dated: March 9, 2010