Farouk Systems, Inc. v.
Larry Brown
Claim Number: FA1001001301736
PARTIES
Complainant is Farouk Systems, Inc. (“Complainant”) represented by Anthony
F. Matheny, of Greenberg Traurig LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chiflatiron.us>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on January 6, 2010;
the Forum received a hard copy of the Complaint on January 7, 2010.
On January 6, 2010, Godaddy.com, Inc. confirmed by e-mail to the
Forum that the <chiflatiron.us> domain name is registered with Godaddy.com,
Inc. and that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On January 8, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 28, 2010 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On February 5, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed John J. Upchurch
as Panelist.
Having reviewed the communications records, the Administrative Panel (the
“Panel”) finds that the Forum has discharged its responsibility under Paragraph
2(a) of the Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the Policy, the Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <chiflatiron.us> domain name is confusingly similar to Complainant’s CHI mark.
2.
Respondent does not have any rights or
legitimate interests in the <chiflatiron.us>
domain name.
3.
Respondent registered and used the <chiflatiron.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Farouk Systems, Inc., operates a
hair product supply business. As part of Complainant’s business, it markets a
line of hair flat iron products under its CHI mark. Complainant has provided evidence of the
registration of its CHI mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,660,257 issued Dec. 8, 2002).
Respondent, Larry Brown, registered the
disputed domain name on February 12, 2009.
The dispute domain name resolves to a website that sells counterfeit
versions of Complainant’s flat iron hair products.
DISCUSSION
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.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
The Panel finds Complainant has established rights under Policy ¶
4(a)(i) in the CHI mark through its registration of the mark with the USPTO (Reg.
No. 2,660,257 issued Dec. 8, 2002). See Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller
Family, FA 104177 (Nat. Arb. Forum Apr. 15,
2002) (finding that the complainant had established rights to the MILLER TIME
mark through its federal trademark registrations).
Complainant contends Respondent’s <chiflatiron.us> domain name is confusingly similar to Complainant’s CHI mark. The disputed domain name contains
Complainant’s CHI mark, adds the descriptive
phrase “flat iron,” and adds the country code top-level domain (“ccTLD”)
“.us.” Previous panels have found the
additions of a descriptive term and a ccTLD to a complainant’s mark fail to
adequately distinguish a disputed domain name from a complainant’s mark. See
Gillette Co. v. RFK Assocs., FA 492867
(Nat. Arb. Forum July 28, 2005) (finding that the additions of the term
“batteries,” which described the complainant’s products, and the generic
top-level domain “.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark); see
also Basic Trademark S.A. v. Antares
S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The
<robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the
space between the words and the addition of the ccTLD “.us,” which does not
significantly distinguish the domain name from the mark.”). Therefore, the Panel concludes Respondent’s <chiflatiron.us> domain name is confusingly similar to Complainant’s CHI mark
pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been
satisfied.
Rights
or Legitimate Interests
Complainant has alleged that Respondent does not have any rights or
legitimate interests in the disputed domain name. The burden shifts to Respondent to prove that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when
the Complainant makes a prima facie
case in support of its allegations. The
Panel finds Complainant has made a sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c). See Vanguard
Group, Inc. v. Collazo, FA 349074 (Nat.
Arb. Forum Dec. 1, 2004) (finding that because the respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the absence
of a Response, the Panel accepts as true all reasonable allegations . . .
unless clearly contradicted by the evidence.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb.
Forum Jan. 4, 2008) (“It is well established that, once a complainant has made
out a prima facie case in support of
its allegations, the burden shifts to respondent to show that it does have
rights or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to
conclude that Respondent owns any service marks or trademarks that reflect the <chiflatiron.us>
domain name. Therefore the Panel finds
that Respondent does not have rights and legitimate interests pursuant to Policy
¶ 4(c)(i). See Meow
Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum
Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner
or beneficiary of a mark that is identical to the <persiankitty.com>
domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat.
Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own
any trademarks or service marks reflecting the <pepsicola.us> domain
name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent has offered no evidence, and there is no evidence in the
record, suggesting that Respondent is commonly known by the <chiflatiron.us>
domain name. Complainant asserts that
Respondent is not authorized to use the <chiflatiron.us> domain
name. The WHOIS information identifies
Respondent as “Larry Brown,” which bears no resemblance to the disputed domain
name Therefore, the Panel finds that
Respondent has not established rights or legitimate interests in the <chiflatiron.us>
domain name pursuant to Policy ¶ 4(c)(iii).
See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii)
does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent uses the <chiflatiron.us> domain name to resolve to a website offering
products which compete with Complainant’s hair styling products, by offering
counterfeit versions of Complainant’s products.
The Panel finds the use of a confusingly similar disputed domain name
for this purpose is not a bona fide
offering of goods or services under Policy ¶ 4(c)(ii)
or legitimate noncommercial or fair use of the disputed domain name under
Policy ¶ 4(c)(iv). See Hewlett-Packard
Co. v. Inversiones HP Milenium
The Panel finds Complainant has established Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Respondent’s <chiflatiron.us> domain name resolves to a website containing counterfeit
versions of Complainant’s hair flat iron products. Internet users interested in Complainant’s hair
product supply business may instead purchase counterfeit products because of
Respondent’s confusingly similar disputed domain name. The Panel finds Respondent’s use of the <chiflatiron.us>
domain name disrupts Complainant’s
business, which constitutes bad faith registration and use under Policy ¶
4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept.
21, 2006) (finding that the respondent registered and used the disputed domain
names in bad faith pursuant to UDRP ¶ 4(b)(iii) by using the disputed domain
names to operate websites that compete with the complainant’s business); see
also Spark Networks PLC v. Houlihan, FA 653476
(Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of
a domain name substantially similar to the complainant’s AMERICAN SINGLES mark
in order to operate a competing online dating website supported a finding that
respondent registered and used the domain name to disrupt the complainant’s
business under UDRP ¶ 4(b)(iii)).
The Panel infers Respondent profits from the sale of counterfeit hair
styling products on the website resolving from the <chiflatiron.us>
domain name. Internet users, searching
for Complainant’s hair styling products, may become confused as to
Complainant’s sponsorship or affiliation with the disputed domain name and
resolving website. Respondent attempts
to profit from this confusion. The Panel
finds Respondent’s use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chiflatiron.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 22, 2010
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