Farouk Systems, Inc. v. jack king / SLB
Claim Number: FA1304001494827
Complainant is Farouk Systems, Inc. (“Complainant”), represented by Joel Mohrman of McGlinchey Stafford PLLC, Texas, USA. Respondent is jack king / SLB (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chi-hair-straightener.us>, registered with GODADDY.COM, INC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2013; the National Arbitration Forum received a hard copy on April 22, 2013.
On April 15, 2013, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <chi-hair-straightener.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 disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Disputed Resolution Policy (the “Policy”).
On April 24, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 14, 2013 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <chi-hair-straightener.us> domain name is confusingly similar to Complainant’s CHI mark.
2. Respondent does not have any rights or legitimate interests in the <chi-hair-straightener.us> domain name.
3. Respondent registered and used the <chi-hair-straightener.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Farouk Systems, Inc., is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CHI mark (e.g., Reg. No. 2,660,257, registered December 10, 2002), used in connection with hair products.
Respondent registered the <chi-hair-straightener.us> domain name on October 7, 2012. Respondent’s <chi-hair-straightener.us> website purports to sell Complainant’s CHI irons and hair dryers.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 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.”).
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.
The Panel finds that Complainant’s registration of its CHI mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel notes that, although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s addition of the descriptive term “hair-straightener” to Complainant’s “CHI” mark in its <chi-hair-straightener.us> domain name does not distinguish it from Complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Respondent also adds hyphens and the country-code top-level domain (“ccTLD”) “.us” in its <chi-hair-straightener.us> domain name, irrelevant under Policy ¶ 4(a)(i). See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The Panel thus finds that Respondent’s <chi-hair-straightener.us> is confusingly similar to Complainant’s CHI mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Policy 4(c) provides four elements that a respondent may demonstrate to show rights or legitimate interests in a domain name: (i) a respondent is the owner or beneficiary of a trademark or service mark that is identical to the domain name; (ii) a respondent is making a bona fide offering of goods and services; (iii) a respondent is commonly known by the disputed domain name; (iv) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
No evidence exists on the record to demonstrate that Respondent owns any service marks or trademarks that reflect the <chi-hair-straightener.us> domain name. Accordingly, the Panel finds that Respondent does not possess rights or 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)).
Complainant asserts that Respondent has not been commonly known by the <chi-hair-straightener.us> domain name. The WHOIS information identifies “jack king / SLB” as the registrant of the disputed domain name, which is not similar to the domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See 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).
Complainant contends that Respondent’s <chi-hair-straightener.us> web site purports to sell Complainant’s CHI irons and hair dryers. Complainant contends that customers searching for authentic CHI irons may be misled and diverted to Respondents’ site instead of Complainant’s site. Complainant states that Respondent is not an authorized distributor or reseller and is presumably selling counterfeit CHI products. The Panel finds that this is not a bona fide offering of goods and services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <chi-hair-straightener.us> web site purports to sell Complainant’s CHI irons and hair dryers and thus is solely for commercial gain. Respondent intentionally attempts to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and of products on Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to divert customers from Complainant’s website to its own website demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chi-hair-straightener.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 29, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page