The Complainant is Farouk Systems, Inc. of Texas, United States of America, represented by Greenberg Traurig, LLP of United States of America.
The Respondent is cheng jinghua of Fujian, the People's Republic of China.
2. The Domain Name and Registrar
The disputed domain name <topchisale.com> is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2009. On December 8, 2009, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. dba dns.com.cn a request for registrar verification in connection with the disputed domain name. On December 9, 2009, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 9, 2010.
The Center appointed Dr. Hong Xue as the sole panelist in this matter on January 15, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant manufactures and sells professional hair care products under the trademark CHI, which has been registered and used in the United States of America and a couple of other countries or regions.
The Respondent registered the disputed domain name <topchisale.com> on August 15, 2009.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name <topchisale.com> is confusingly similar to the trademark CHI, the registration and use of which by the Complainant long precedes the registration of the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith.
The Complainant requests that the disputed domain name <topchisale.com> be transferred to it.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Language of Proceeding
The language of the registration agreement for the disputed domain name <topchisale.com>, as confirmed by the Registrar, is Chinese. The Complainant has requested that the language of the proceeding be English and has presented its reasons. The Respondent did not make any submissions in relation to the language of proceeding even though the Center's communications to this effect were both in English and in Chinese.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Among other circumstances, the respondent's ability to clearly understand the language of the complaint, and the complainant's being disadvantaged by being forced to translate, may both support a panel's determination that the language of the proceeding remains the language of the complaint, even if it is different from the language of the registration agreement (L'Oreal S.A. v. MUNHYUNJA,
WIPO Case No. D2003-0585).
According to the Rules, paragraph 10(b), the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Therefore a panel shall objectively assess the Parties' language ability in the proceeding. In the present case, the Panel finds that the Respondent has sufficient capacity to present its case in English. The Panel's conclusion is based in part on the fact that the website established at the disputed domain name, <topchisale.com>, displays the contents in English. On the other hand, it is genuinely difficult for the Complainant to translate all the submissions into and take part in the proceeding in the language of the registration agreement.
Having considered all the circumstances, this Panel determines under the Rules, paragraph 11(a) that English shall be the language of the proceeding.
B. Identical or Confusingly Similar
Pursuant to the Policy, paragraph 4(a)(i), a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such requirement, a complainant must prove its trademark rights and the similarity between the disputed domain name and its trademark.
The Panel finds that before the registration of the disputed domain name the Complainant's trademark CHI had been registered and used on professional hair care products in a number of countries.
The disputed domain name is <topchisale.com>. Apart from the generic top-level domain suffix “.com”, the disputed domain name consists of “topchisale”, which can easily be read as “top”, “chi” and “sale.” It is established by numerous decisions made under the Policy that adding generic words to a complainant's mark does not preclude a finding of confusing similarity (Prada S.A. v. Roderick G. Arnold,
WIPO Case No. D2002-0928). Given that the disputed domain name contains the Complainant's mark CHI in its entirety, adding the generic terms “top” and “sale” does not preclude the disputed domain name from being confusingly similar to the Complainant's mark CHI.
The Panel therefore finds that the disputed domain name <topchisale.com> is confusingly similar to the Complainant's registered trademark CHI. Accordingly, the Complainant has proven the first element required by paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any right or legitimate interest it may have in the disputed domain name.
It is apparent from the Complaint that there is no connection between the Respondent and the Complainant or its business. Paragraph 4(c) of the Policy lists a number of circumstances which can be taken to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply here. To the contrary, the lack of a Response leads the Panel to draw a negative inference.
Therefore, and also in light of the Panel's findings below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has proven the second element required by paragraph 4(a) of the Policy.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent did not respond.
Through examining the evidence submitted, the Panel is impressed by the fact that the website set up at the disputed domain name <topchisale.com> highlights the trademark CHI and sells various hair care products, including what appears to be counterfeit versions of the Complainant's products. Since the disputed domain name was registered and is fully controlled by the Respondent, the Respondent is responsible for any use of the disputed domain name. The use of a disputed domain name that is confusingly similar to the Complainant's mark to attract consumers to a website that is commercializing what appears to be counterfeit versions of the Complainant's products is highly likely to cause confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or of the products on the website.
The Panel finds that this is adequate to conclude that the Respondent has registered and is using the disputed domain name in bad faith under the Policy, paragraph 4(b)(iv). Therefore, the Complainant has successfully proven the third element required by paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <topchisale.com> be transferred to the Complainant.
Dr. Hong Xue Sole Panelist
Dated: January 29, 2010
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