The Complainant is Farouk Systems, Inc., Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is conglong zhu, Shenzhen, China.
The disputed domain name <chighdmk4.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2010. On January 11, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 11, 2010, 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 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 5, 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.
The factual background is taken from the information submitted by the Complainant.
The Complainant manufactures and sells high quality hair care products and devices internationally under the trademark CHI.
The Complainant owns a substantial number of trademarks for CHI, alone or in combination, registered at the United States Patent and Trademark Office and in other countries, including for example:
CHI, USPTO, registration number 2660257, registered December 10, 2002, for electric hair curling irons;
CHI, USPTO, registration number 3107769, registered June 20, 2006, for electric hand-held hair dryers;
CHI NANO, USPTO, registration number 3387588, for hair irons;
CHI, USPTO, registration number 3426769, for certain hair treatment preparations;
CHI, Australia, registration number 936956, international classes 9, 11;
CHI, Canada, registration number TMA700790;
CHI, China, registration number 3396005, international class 9;
CHI, European Community, registration number 4457594, international classes 9, 16.
The Complainant owns and uses the website “www.chiretail.com”.
The disputed domain name was registered by the Respondent on or about April 1, 2009.
No factual background information has been provided by the Respondent except for the details provided in the registration document of the disputed domain name. According to the Complainant, the Respondent is an Internet trader in the Complainant's branded products, or copies of them, without authority.
The Complainant contends that it has rights in the trademark CHI and submits copies of registration documents for USPTO trademarks numbers 2660257 and 3107769.
The Complainant says that it has no connection with the Respondent and that the Respondent is selling products branded with the Complainant's trademark, having obtained them without authority or by offering counterfeit copies. Furthermore the Respondent uses its label “GHD” in conjunction with the designation “CHI”, causing consumers to confuse “GHD” with the Complainant's trademark CHI.
The Complainant contends that the disputed domain name <chighdmk4.com> is confusingly similar to its registered trademark CHI, and that a portion is identical.
The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant says that it has never licensed or authorised the Respondent to use its trademark in any way. The Respondent is not an authorised dealer of the Complainant and cannot have permission to register a domain name in the Complainant's name. The Respondent has not made preparations to use the disputed domain name in connection with any bona fide offering of goods or services. There is no evidence that the Respondent has intended to make any non-commercial or fair use the disputed domain name.
The Complainant further contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent's intention is to attract Internet users for commercial gain by confusing visitors into thinking that the website or the goods sold through it have the endorsement of the Complainant. Some goods sold through the Respondent's website may be counterfeit copies of the Complainant's goods. The Respondent's inclusion of the characters “ghdmk4” seeks to associate the Respondent's goods with the Complainant's trademark. The disputed domain name was registered in 2009, some years after the Complainant's trademark, and the Respondent had constructive knowledge of the trademark.
The Complainant has cited a number of previous UDRP decisions for the consideration of the Panel as possible precedent.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant is required to prove that it has rights in a relevant trademark. The Panel is satisfied from the copies of documentation submitted that the Complainant has rights in USPTO trademarks numbers 2660257 and 3107769 for CHI.
The Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. The disputed domain name is <chighdmk4.com>, of which the component “.com” may be disregarded in the assessment of confusing similarity. What remains, “chighdmk4”, commences with “chi”, being identical to the Complainant's trademark CHI. The question to be decided is whether that amounts to confusing similarity between CHI and the disputed domain name.
As the Complainant has argued, citing several previous UDRP decisions, it is well established that the addition of words or letters to a trademark is not usually sufficient to avoid a finding of confusing similarity. The Complainant's three-letter trademark CHI is not particularly distinctive, but is a valid registered trademark. Confusing similarity would not necessarily be found in a domain name merely because it contained or commenced with letters identical to the trademark CHI, which could apply to many ordinary words or could happen by coincidence.
In the present instance, however, the letters trailing “chi” in the disputed domain name evidently are not random but have a meaning in terms of the Respondent's Internet business and the goods the Respondent sells. The Respondent's on-line catalogue, according to the screen print of its website submitted in evidence by the Complainant, has a page with the prominent heading “CHI-ghd Flat iron” that includes various other hair-treatment devices labelled “CHI” or “GHD”. The part of the disputed domain name after “chi” reads “ghd”, and the remaining letters, namely “mk4”, may evoke the meaning “mark 4”, a commonly used reference to succeeding models of a product. The Panel is satisfied in this case that the disputed domain name is confusingly similar to the Complainant's trademark within the meaning of paragraph 4(a)(i) of the Policy.
The Complainant has asserted prima facie that the Respondent has no rights or legitimate interests in the disputed domain name, in part because the Complainant has never licensed or authorised the Respondent to use its trademark in any way. The Respondent has not availed itself of the opportunity in the terms of paragraph 4(c) of the Policy to demonstrate that it has used or made preparations to use the disputed domain name in connection with any bona fide offering of goods or services, or that the Respondent has been known by the disputed domain name, or that it has made any non-commercial or fair use of it.
The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your website or location.
The Respondent's website, to which the disputed domain name leads, offers various hair care products for sale. The Complainant has demonstrated, and the Respondent has not contested, that some of the Respondent's merchandise is either the Complainant's product, or closely resembles it in appearance and description. The Complainant states that the Respondent's merchandise, in so far as it gives an appearance of originating from the Complainant, is traded without the authority of the Complainant. The Panel finds on the balance of probabilities that the Respondent's website, to which the disputed domain name resolves, is intended to attract Internet visitors for purposes of the Respondent's commercial gain by confusion with the Complainant's trademark, within the meaning of paragraph 4(b)(iv) of the Policy, and that it was registered mainly for that purpose. The Respondent is found to have registered and used the disputed domain name in bad faith in the terms of paragraph 4(a)(iii) 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 <chighdmk4.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: March 19, 2010