Farouk Systems, Inc. manufactures and sells professional hair care products in over 60 countries worldwide and has been using the CHI mark on its hair products since 2000, owning several trademarks for the word "CHI" for use of hair care products. On June 16, 2005, the Respondent registered the domain name "originalchi.com", which resolved to a website that prominently branded "CHI flat iron" and offered for sale what were claimed to be Farouk's "Chi" hair care products, asserting that the products were covered by a warranty from Farouk and advising users to contact Farouk in relation to warranty claims and product returns. Respondent's website also included details, reviews and tips and advice related to Farouk's products, the ability to purchase unauthorized versions of Farouk's products and/or counterfeit reproductions of Farouk's products.
When Farouk successfully sought transfer of the domain in a WIPO proceeding, the panel noted that the addition of the generic and laudatory term "original" to Farouk's registered trademark for "CHI" was insufficient to differentiate the domain name and trademark and, rather, enhanced the connection, rendering it confusingly similar to Farouk's CHI trademark. In addition, it was held that the domain was registered and used in bad faith where the website at the disputed domain name was used to either resell the Complainant's products or to sell counterfeit versions. In so holding, it was noted that the majority view of WIPO panelists holds that a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant's relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the mark. By application of the foregoing, it was held that the Respondent at bar did not accurately disclose its relationship with the trademark owner and, on the contrary, the use of "original" with "chi" in the disputed domain name suggests that the Respondent has some sort of connection with Farouk, which it does not. It was held that the Respondent's site itself enhances the likelihood of confusion by, amongst other things, prominent use of Farouk's mark on the homepage and false claims that the Respondent's products are covered by warranties from Farouk. It was further noted that, if the Respondent's products are indeed counterfeits, then the case against it was even stronger.
Farouk Systems, Inc. v. Originalchi.com, WIPO Case No. D2007-1201.
