ADMINISTRATIVE PANEL DECISION
Farouk Systems Inc. v. David
Case No. D2009-1245
1. The Parties
The Complainant is Farouk Systems Inc., Houston, Texas, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is David, the People’s Republic of China.
2. The Domain Name and Registrar
The Disputed Domain Name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2009. On September 29, 2009, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the Disputed Domain Name. On September 30, 2009, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 30, 2009, the Center sent the language of proceeding documents in both Chinese and English to the parties. The Complainant requested English be the language of proceeding on the same day. The Respondent did not comment on the language of proceeding by the due date. 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 October 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2009.
The Center appointed Kar Liang Soh as the sole panelist in this matter on November 2, 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.
4. Factual Background
The Complainant is a leading manufacturer of professional hair care products which is sold in over 60 countries worldwide. The Complainant has been in the hair care business for nearly 20 years and markets its popular hair care products such as electric hair curling irons, electric hand held hair dryers, electric flat irons, etc, under the trademark CHI.
The Complainant owns registrations for the trademark CHI in various jurisdictions. These registrations include the following:
Country Trademark No Trademark Registration Date
United States 2,660,257 CHI December 10, 2002
United States 3,107,769 CHI June 20, 2006
China 3,396,005 CHI March 14, 2003
The Complainant’s official website for products under the trademark CHI is located at the URL “www.chiretail.com”. The domain name was registered on December 14, 2006.
The Respondent registered the Disputed Domain Name on March 18, 2009. The Disputed Domain Name resolves to a website offering hair care products to which the trademark CHI is applied. The Panel notes that the web pages on the Respondent’s website incorporate a title “CHI Flat Irons Save up to 70% free & fast shipping”. The content of the website appears to showcase exclusively products under the trademark CHI. A number of pages also describe products in association with the word “Farouk” which is a prominent feature of the Complainant’s name.
The Respondent is allegedly not authorized to sell or offer for sale the Complainant’s hair care products under the trademark CHI.
5. Parties’ Contentions
The Complainant contends that:
(1) The Disputed Domain Name is identical or confusingly similar to the trademark CHI. The word “shopping” in the Disputed Domain Name is a generic word. The Disputed Domain Name suggests that the Respondent is the source of and/or an authorized distributor of the Complainant’s products under the trademark CHI;
(2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has no relationship with the Respondent and the Complainant has never authorized the Respondent to use the trademark CHI. The Respondent is not an authorized dealer or licensee of the Complainant’s products. The products shown on the Respondent’s website are unauthorized and/or counterfeit reproductions of the Complainant’s products; and
(3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent is aware of the Complainant’s trademark and business. The Respondent’s website creates a likelihood of confusion with the Complainant’s trademark CHI. The Respondent is using the Disputed Domain Name to attract Internet users for commercial gain and redirecting Internet users away from the Complainant’s website.
The Respondent did not reply to the Complainant’s contentions.
6.1 Language of the Proceedings
The language of the Registration Agreement was in Chinese. In accordance with paragraph 11(a) of the Rules, the default language of the proceedings should be Chinese. However, the Panel may determine otherwise having regard to the circumstances. Many past panel decisions have established that the language of the proceedings must be determined with the object of ensuring fairness to the parties and keeping the proceedings cost-effective and expeditious (e.g., Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical applicance co. ltd., WIPO Case No. D2008 0293).
The Complainant submits that English should be the language of the proceedings for the following reasons:
(1) The Respondent uses English exclusively to promote and sell products on the website resolved from the Disputed Domain Name and thus the Respondent conducts business in English on a daily basis;
(2) The Respondent accepts US dollars as the only currency for payment of products on the website; and
(3) The Respondent states in English on the website that customers and potential customers may contact “live support” and thus shows that the Respondent is able to correspond “live” with customers in English.
The Panel is unable to agree with the Complainant’s logic that use of US currency is an indication of English competence. The offering of “live support” per se does not necessarily amount to a holding out of English capability. However, the exclusive use of English on the Respondent’s website does suggest very strongly that the Respondent is conversant with English and is unlikely to be prejudiced if the proceeding is in English.
The Respondent has not objected to the Complainant’s use and/or request for English to be the language of the proceedings. Since the Respondent has chosen not to participate in this proceeding, it would also be inordinately burdensome to require the Complaint to be submitted in English. Having regard to the Complainant’s submissions and the expeditious disposition of the proceeding, the Panel holds in accordance with paragraph 11(a) of the Rules that English be adopted as the language of the proceedings.
To succeed in the proceeding, paragraph 4(a) of the Policy requires the Complainant to show that:
(1) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
In view of the trademark registrations identified above, the Complainant clearly owns rights in the trademark CHI. The Disputed Domain Name is not identical to CHI as it concatenates the word “chi” with the word “shopping” as a prefix. However, save for the word “shopping”, the word “chi” in the Disputed Domain Name is the same as the Complainant’s trademark CHI.
It has been established by many past panel decisions that a domain name incorporating a trademark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trademark (eg, Michelin Recherche et Technique SA v Naxza.com, WIPO Case No D2005 1107; Edmunds.com, Inc. v. keyword Marketing Inc. a/k/a Marketing Total S.A. a/k/a Domain Drop S.A., WIPO Case No. D2007 1427; PM-International AG v. Man Utd Club, WIPO Case No. D2008 1432). The word “shopping” in the Disputed Domain Name is a non-distinctive prefix. There being no special circumstances in the facts requiring exceptional treatment, the Panel will follow the established precedents and accept that the Disputed Domain Name is confusingly similar to the Complainant’s trademark CHI.
B. Rights or Legitimate Interests
The Respondent has chosen to remain silent in the face of the Complainant’s many assertions that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Panel accepts that Respondent is not authorized by the Complainant to use the Complainant’s trademark CHI. The Complainant’s evidence further suggests that the Respondent may be using the website under the Disputed Domain Name for illegitimate purposes (i.e., infringement of the Complainant’s trademark CHI).
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. This prima facie case has not been rebutted by the Respondent. In the circumstances, the Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Complainant has asserted that the trademark CHI is a well-known mark. However, the Complainant has not provided any supporting evidence that could assist the Panel in concluding as such.
Paragraph 4(b)(iv) of the Policy provides that the following is evidence of bad faith registration and use:
“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 web site or location.”
The Complainant owns the trademark CHI. The Respondent is unconnected to the Complainant. The Respondent’s online shopping website under the Disputed Domain Name and the prefix “shopping” in the Disputed Domain Name leaves this Panel with a strong impression that the Respondent is using or intending to use the Disputed Domain Name to sell products under the Complainant’s trademark CHI. Beyond establishing this, it is not necessary for the Panel to determine the question of trademark infringement under the laws governing the relevant trademark registrations.
The use of the Disputed Domain Name and the Complainant’s trademark CHI in the content of the website resolved from the Disputed Domain Name, in the absence of any explanation from the Respondent, points squarely at the conclusion that the Respondent is intentionally attempting to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark CHI as to source, sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant. The facts match the situation of bad faith registration and use under paragraph 4(b)(iv).
The Panel also considers the WhoIs particulars of the Respondent highly suspicious. The Respondent simply provided a single word “David” as his or her name. “David” is a very common first name and/or last name. There is no reasonable means to determine the real identity of the Respondent purely on the basis of the single word “David”.
The address provided by the Respondent does not assist either. It is stated as “sudfioolf city, Foreignness, 43255, WG, KR”. It does not include what may be recognizable as a street name.
The name of the relevant country has not been spelt out in the address provided by the Respondent. The letters “KR” in the address represent the ISO 3166 country code for the Republic of Korea. The phone and fax numbers provided by the Respondent are preceded by the international dialing code “+86” for the People’s Republic of China. As far as the Panel is aware, there are no cities in the Republic of Korea or the People’s Republic of China named “sudfioolf city” or “Foreignness”. Searches of “sudfioolf city” and “Foreignness” on Google do not turn up any relevant hits. In fact, the former did not turn up any hits whatsoever.
The Center’s attempt to courier the Complaint to the Respondent’s address resulted in delivery failure. In the circumstances, the Panel cannot avoid the conclusion that the Respondent’s address is fictitious. There is no reason to suspect that the fictitious particulars were provided other than deliberately.
The Center also tried unsuccessfully to communicate with the Respondent using the provided email address. By providing a fictitious address and an ineffective email address, the Respondent clearly has no intention of being contactable or locatable. An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name in the absence of extenuating circumstances speaks of bad faith registration and intention to use, and the subsequent use of the domain name will accordingly be tainted by bad faith as well.
In view of the above findings, the Panel holds that the Disputed Domain Name was registered and used in bad faith by the Respondent.
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, , be transferred to the Complainant.
Kar Liang Soh
Dated: November 24, 2009