Farouk Systems, Inc. c/o Jason L. Rumsey v. jack king / SLB
Claim Number: FA1507001628879
Complainant is Farouk Systems, Inc. c/o Jason L. Rumsey (“Complainant”), Texas, USA. Respondent is jack king / SLB (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <chistraightener.co> and <chihairstraightener.co>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 15, 2015; the Forum received payment on July 15, 2015.
On July 15, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <chistraightener.co> and <chihairstraightener.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2015 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@chistraightener.co, postmaster@chihairstraightener.co. Also on July 21, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 for Uniform Domain Name 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 ICANN Policy, ICANN 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the CHI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,660,257, registered Dec. 10, 2002). Respondent’s <chistraightener.co> and <chihairstraightener.co> domain names are confusingly similar to the CHI mark because each domain contains the entire mark, altered by only the additions of the words “hair,” and/or “straightener” and the country-code top-level domain (“ccTLD”) “.co.”
Respondent is not commonly known by the <chistraightener.co> and <chihairstraightener.co> domain names because there is no evidence of it being known as such. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving websites to sell counterfeit versions of Complainant’s products. Respondent’s WHOIS information is fictitious.
Respondent uses and registered the disputed domain names in bad faith because it uses the resolving websites to attract Internet users seeking Complainant, and, in doing so, profits commercially. Respondent sells counterfeit goods and passes them off as Complainant’s goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 and is being used in bad faith.
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 Complainant prove the following three elements to obtain an order canceling or transferring a domain name:
(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 and 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.”).
Complainant has rights in the CHI mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,660,257, registered Dec. 10, 2002). Registration with the USPTO (or any governmental trademark authority) suffices to demonstrate Complainant’s rights in a mark under Policy ¶4(a)(i), even where a complainant and respondent reside or operate in different countries. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has rights in the CHI mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <chistraightener.co> and <chihairstraightener.co> domain names are confusingly similar to the CHI mark because each domain contains Complainant’s entire mark, altered by only the additions of the words “hair,” and “straightener” and the ccTLD “.co.” The addition of a ccTLD must be disregarded in a Policy ¶4(a)(i) analysis because domain name syntax requires a gTLD (or a ccTLD). See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names”). Complainant’s USPTO registrations show Complainant manufactures and sells hair straighteners. Adding descriptive terms to a mark still results in a confusingly similar domain name under Policy ¶4(a)(i). 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’s <chistraightener.co> and <chihairstraightener.co> domain names are confusingly similar to Complainant’s CHI mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known by the disputed domain names. The WHOIS information lists “jack king” as Registrant and Respondent has failed to provide further evidence to indicate being commonly known by the domain names. There is no obvious relationship between Respondent’s name and the domain names. Given the lack of evidence in this record, the Panel must find Respondent is not commonly known by either domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Respondent is not commonly known by the <chistraightener.co> and <chihairstraightener.co> domain names under Policy ¶4(c)(ii).
Complainant claims Respondent does not use the <chistraightener.co> and <chihairstraightener.co> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving websites to sell counterfeit versions of Complainant’s products. Complainant has not provided evidence of this use (which is not apparently on-going based upon the Panel’s independent research), although Respondent does not dispute the fact it sells counterfeit goods. The sale of counterfeit goods is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Furthermore, Respondent has not acquired any rights to these domain names because Respondent has provided false WHOIS contact information. This means Respondent has not publicly associated its true identity with the disputed domain names. This means Respondent has not acquired any rights to the domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses <chistraightener.co> and <chihairstraightener.co> domain names to mislead Internet users into believing Respondent’s counterfeit goods are Complainant’s genuine goods. This means Respondent commercially profits from the disputed domain names. Such actions constitute bad faith registration and use pursuant to 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). Respondent registered and uses the <chistraightener.co> and <chihairstraightener.co> domain names in bad faith pursuant to Policy ¶4(b)(iv).
Finally, Respondent has provided false WHOIS contact information. In the commercial context, this raises the rebuttable presumption of bad faith. Respondent has done nothing to rebut this presumption. For that reason alone, this Panel finds Respondent has acted in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, adopted by the .co ccTLD, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <chistraightener.co> and <chihairstraightener.co> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 19, 2015
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