Farouk Systems, Inc. v kimi kimilin / kimigongzuoshi
Claim Number: FA1410001585497
Complainant is Farouk Systems, Inc. (“Complainant”), represented by Jason L. Rumsey of Farouk Systems, Inc., Texas, USA. Respondent is kimi kimilin / kimigongzuoshi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chiflat-iron.us>, registered with 1API GMBH.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2014; the National Arbitration Forum received payment on October 17, 2014.
On October 27, 2014, 1API GMBH confirmed by e-mail to the National Arbitration Forum that the <chiflat-iron.us> domain name is registered with 1API GMBH and that Respondent is the current registrant of the name. 1API GMBH has verified that Respondent is bound by the 1API GMBH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s Domain Name Dispute Resolution Policy (the “Policy”).
On October 29, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@chiflat-iron.us. Also on October 29, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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) of the Rules for the usTLD 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
Complainant contends as follows:
Complainant uses CHI in connection with the sale of hair care products and accessories, including hair irons and hair straighteners. The CHI mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,426,769, May 13, 2008). The <chiflat-iron.us> domain name combines the CHI mark and the descriptive phrase “flat-iron,” along with the “.us” TLD.
Respondent has no rights or interests in the <chiflat-iron.us> domain name. First, Respondent is not commonly known by the <chiflat-iron.us> domain name. Second, Respondent sells counterfeit merchandise through the <chiflat-iron.us> domain name.
Respondent has registered and is using the <chiflat-iron.us> domain name in bad faith. Respondent is profiting from a likelihood Internet users will confuse the <chiflat-iron.us> domain name as being associated with Complainant. Respondent’s contact information as submitted to its Registrar is false, false identifying information is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the CHI mark through registration of the mark with the USPTO.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the CHI mark.
Respondent uses the CHI domain name to address a commercial website displaying Complainant’s registered trademark and offering counterfeit CHI products.
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 usPolicy 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of USPTO trademark registrations for the CHI trademark demonstrates its rights in such mark for the purposes of usPolicy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. 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.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
In forming the at-issue domain name Respondent adds the descriptive term “flat-iron” and to Complainant’s CHI trademark and then appends the top-level domain name “.com” to the resulting string. These alterations to Complainant’s CHI trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the usPolicy. Therefore, the Panel finds that the <chiflat-iron.us> domain name is confusingly similar to Complainant’s CHI mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also, Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Under usPolicy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of usPolicy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no usPolicy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “kimi kimilin” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <chiflat-iron.us> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usPolicy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent sells counterfeit merchandise through the <chiflat-iron.us> domain name. The website addressed by the <chiflat-iron.us> domain name displays numerous products claiming to be authentic offerings from Complainant, when in fact Respondent has no authority or license to sell such products. Using the domain name in this manner is neither a bona fide offering of goods or services under usPolicy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under usPolicy ¶ 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).
Given the forgoing, Complainant satisfies its initial burden under usPolicy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, usPolicy ¶4(b) specific bad faith circumstances are present which direct the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the usPolicy.
While multiple arguments supporting Respondent’s bad faith might be made in addition to those made in the Complaint, Complainant need only proffer compelling evidence of one of the bad faith indicia set out in usPolicy ¶4(b) et seq. to prevail. As mentioned above, Respondent is profiting from the inevitability that Internet users will falsely surmise that the <chiflat-iron.us> domain name is associated with or sponsored by Complainant. Having landed on the commercial website addressed by Respondent’s confusingly similar domain name, visitors are then disposed to purchase Respondent’s counterfeit offerings. Respondent’s sale of counterfeit goods on its <chiflat-iron.us> website demonstrates bad faith under usPolicy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chiflat-iron.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 2, 2014
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