Farouk Systems, Inc. v. John Smith
Claim Number: FA1001001304283
PARTIES
Complainant is Farouk Systems,
Inc. (“Complainant”) represented by Anthony
Matheny, of Greenberg Traurig LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chihairstraightener.us>
and <flatironstore.us>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially
and to the best of his knowledge has no known conflict in serving as Panelist
in this proceeding.
Judge Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on
On
On January 26, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 16, 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
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 names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <chihairstraightener.us> and <flatironstore.us> domain names are confusingly similar to Complainant’s CHI mark.
2.
Respondent does not have any rights or
legitimate interests in the <chihairstraightener.us> and <flatironstore.us>
domain names.
3.
Respondent registered and used the <chihairstraightener.us> and <flatironstore.us>
domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Farouk Systems Inc., is a
designer, marketer and seller of hair products including curling irons and hair
dryers. Complaint owns several trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
its CHI mark (e.g., Reg. No.
2,660,257 issued on
Respondent registered the <chihairstraightener.us> and <flatironstore.us> domain
names on
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
Respondent registered the <chihairstraightener.us> and <flatironstore.us> domain
names on
Complainant alleges that Respondent’s <chihairstraightener.us>
domain name is confusingly similar
to Complainant’s CHI mark. The disputed
domain name contains Complainant’s entire mark and simply adds the descriptive
terms “hair” and “straightener,” which describe Complainant’s hair products
business, and adds the country-code top-level domain (“ccTLD”) “.us.” The Panel finds the additions of descriptive
terms and a ccTLD to Complainant’s marks fail to adequately distinguish the
disputed domain name from Complainant’s mark.
See Kohler Co. v. Curley, FA
890812 (Nat. Arb. Forum
Complainant also
contends that the <flatironstore.us> domain name is confusingly similar to
Complainant’s CHI mark. However, the
disputed domain name does not contain Complainant’s mark, and Complainant has
not provided evidence that it has established rights in any of the terms
contained in the disputed domain name.
Therefore, the Panel finds that Respondent’s <flatironstore.us> domain name is not confusingly similar to
Complainant’s CHI mark pursuant to Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147
(9th Cir. 2002) ("Similarity of marks or lack thereof are
context-specific concepts. In the Internet context, consumers are aware that
domain names for different Web sites are quite often similar, because of the
need for language economy, and that very small differences matter."); see also Thomas Cook Holdings Ltd. v. Aydin,
D2000-0676 (WIPO Sept. 11, 2000) (finding that
the domain name, <hot18to30.com>, is neither identical nor confusingly
similar to the complainant’s CLUB 18-30 trademark).
Since the Panel has concluded that Complainant
has not satisfied Policy ¶ 4(a)(i), in relation to
Respondent’s <flatironstore.us> domain name because the disputed domain name is not confusingly similar to
Complainant’s CHI mark the Panel declines to analyze the other two elements of
the Policy. See Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the
Policy, the complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary); see also Hugo Daniel
Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum
As to Respondent’s <chihairstraightener.us> domain name, 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
<chihairstraightener.us> domain name. The burden shifts to Respondent to prove it
does have rights or legitimate interests once Complainant makes a prima facie case in support of its allegations
under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient
prima facie case. Respondent’s failure to respond to the
Complaint allows the Panel to infer that 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
There is no evidence in the record to
conclude that Respondent owns any service marks or trademarks that reflect the <chihairstraightener.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
Complainant asserts
that Respondent has never been authorized to use the CHI mark. Complainant further provides the WHOIS
information which lists the domain name registrant as “John Smith.” Respondent has failed to provide evidence
that it is commonly known by the <chihairstraightener.us>
domain name. Furthermore, the Panel
fails to find evidence in the record suggesting that Respondent is commonly
known by the disputed domain name.
Therefore, the Panel finds Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July
7, 2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent uses the <chihairstraightener.us>
domain name to resolve to a website where Complainant’s hair products, as well
as counterfeit or unauthorized versions of Complainant’s hair products, are offered
for sale. The Panel finds this use is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a 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 Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
On the website resolving from the <chihairstraightener.us>
domain name, Respondent offers to sell hair products that belong to Complainant
and unauthorized or counterfeit versions of Complainant’s hair products. Internet users interested in purchasing hair
products from Complainant may instead purchase these products from Respondent
because of Respondent’s use of the confusingly similar disputed domain
name. The Panel finds Respondent’s use of the <chihairstraightener.us>
domain name disrupts Complainant’s hair products business, which constitutes
bad faith registration and use under Policy ¶ 4(b)(iii). See
Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent
registered a domain name primarily to disrupt its competitor when it sold
similar goods as those offered by the complainant and “even included
Complainant's personal name on the website, leaving Internet users with the
assumption that it was Complainant's business they were doing business with”);
see also Fossil, Inc. v. NAS, FA
92525 (Nat. Arb. Forum
The Panel infers Respondent profits from the sale of counterfeit and competing hair products on the website resolving from the <chihairstraightener.us> domain name. Internet users, searching for Complainant’s hair products, may become confused as to Complainant’s sponsorship of 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 Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy in relation to the <chihairstraightener.us> domain name, the Panel concludes that relief shall be GRANTED.
Having failed to establish all three elements required under the usTLD Policy in relation to the <flatironstore.us> domain name, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <chihairstraightener.us> domain name be TRANSFERRED from Respondent to Complainant and the <flatironstore.us> domain name to remain with Respondent.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 12, 2010
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