Farouk Systems, Inc v. Domain Administrator / DVLPMNT MARKETING, INC.
Claim Number: FA1709001748489
Complainant is Farouk Systems, Inc (“Complainant”), represented by Jason L. Rumsey of Farouk Systems, Inc - General Counsel, Texas, USA. Respondent is Domain Administrator / DVLPMNT MARKETING, INC. (“Respondent”), St. Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chihaircolor.com>, registered with DNC Holdings, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2017; the Forum received payment on September 11, 2017.
On September 12, 2017, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <chihaircolor.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 September 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2017 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@chihaircolor.com. Also on September 13, 2017, 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 October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it offers an assortment of products including hair care and coloring, household appliances, and fragrances featuring the CHI mark. Complainant has registered the trademark in the United States on January 31, 2006; it has filed other trademark registrations in 2003.
According to Complainant, the disputed domain name is confusingly similar to the CHI mark because it incorporates the mark in its entirety, adds generic terms “hair” and “color,” and adds a “.com” generic top-level domain (“gTLD”).
Complainant alleges that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name. In addition, Respondent has not made a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Rather, Respondent has attempted to divert Internet users to its website in an attempt to sell counterfeit products of Complainant.
Further, says Complainant, Respondent registered and used the disputed domain name in bad faith. Respondent intentionally attempted to attract Internauts for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s site and products from its counterfeit use under the language of Policy ¶ 4(b)(iv). Moreover, Respondent’s contact information was false, creating a presumption of bad faith under nonexclusive Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CHI and uses it to hair care products.
Complainant’s rights in its marks date back to at least January 31, 2006.
The disputed domain name was registered on April 17, 2006.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s 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 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 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(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 (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 disputed domain name is confusingly similar to the CHI mark because it includes the mark in its entirety, and the addition of the generic terms “hair” and “color,” and the “.com” gTLD are insufficient to avoid a finding of confusing similarity under the Policy. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Thus the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information is routinely considered dispositive of Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS identifies the registrant organization as “DVLPMNT MARKETING, INC. Thus the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent is selling counterfeit versions of Complainant’s products through its website associated with the disputed domain name. Counterfeit usage has been considered to weigh heavily against finding rights or legitimate interests for a respondent. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent is using the disputed domain name to resolve to a web site that offers counterfeit versions of Complainant’s products. Thus Respondent intentionally attempts to attract users for commercial gain by using the CHI mark to create confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s site. This constitutes bad faith use under the Policy. See Allianz of Am. Corp. v. Bond, FA 680624 (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); see also DG Premium Brands LLC v. Donald Knapp, FA 1746551 (Forum Sept. 25, 2017) (Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in an attempt to sell counterfeit goods, is indicative of bad faith under these provisions of the Policy); see also Kurk Wasserman Consulting, L.L.C. v. Elis Kias / AIMEI International Trade Co., Ltd, FA 1735426 (Forum July 10, 2017); see also Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Farhad Salimi, FA 1719039 (Forum Mar. 28, 2017). Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chihaircolor.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: October 5, 2017
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