Complainant is Moroccanoil Israel Ltd. of Rishon Lezion, Israel, internally represented.
Respondent is Weloveshopping of Bangkok, Thailand. 2. The Domain Name and Registrar
The Disputed Domain Name ("Disputed Domain Name") is registered with OnlineNic, Inc. d/b/a China-C (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on November 11, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2015. Respondent sent email communications to the Center on December 2, 2015 and December 4, 2015. These email communications do not constitute a response and essentially say that Respondent is not involved in any selling of products on the website to which the Disputed Domain Name resolves. The Center notified the parties of the commencement of the Panel appointment process on December 4, 2015. Nothing further has been submitted by Respondent.
The Center appointed Richard W. Page as the sole panelist in this matter on December 10, 2015. 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
Complainant was formed in 2007 and its first product was a hair oil treatment based on a unique and proprietary product formula which includes oil from the nut of the argan tree, which is indigenous to Morocco and Algeria and which is cultivated in Israel.
Since 2007, Complainant has made extensive use of the Moroccanoil brand and Moroccanoil trademarks throughout the world. Complainant has spent millions of dollars in marketing their products worldwide and continues to incur regular expenses in ensuring the products are appropriately manufactured, tested, packaged, and stored before permitting their sale.
Complainant reached around one billion dollars in retail sales in the year 2015 and acquired trademark protection in numerous countries over its Moroccanoil trademark and logos (the "MOROCCANOIL Mark"). Registrations have been made in many countries, including without limitation the United States of America, Canada, China, India and Japan. These filing were made as early as 2007.
Respondent registered the Disputed Domain Name on February 12, 2015. 5. Parties' Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to the MOROCCANOIL Mark because it incorporates the entire registered trademark into the Disputed Domain Name as well as the design of Respondent's website. Complainant further contends that Respondent utilizes the MOROCCANOIL Mark, Complainant's copyrighted pictures and Complainant's products for commercial benefit. Complainant continues that Respondent's intent is to lure potential customers from Complainant to Respondent's website in order to purchase unauthorized products of Complainant.
Complainant alleges that Respondent is not the owner or beneficiary of a trademark or service mark that is identical or similar to the Disputed Domain Name. Complainant further alleges that Respondent has not received any authorization or consent, express or implied, to use the MOROCCANOIL Mark, Complainant's logos or Complainant's company name in the Disputed Domain Name or in any other manner.
Complainant contends that Respondent registered and is using the Disputed Domain Name, together with Complainant's logos and pictures of Complainant's products to attract customers in search of Complainant's products.
Complainant further contends that it has received worldwide recognition for its MOROCCANOIL Mark since 2007 and has earned several awards, enjoyed celebrity endorsements, and received a substantial amount of press coverage. The wide range of press coverage and awards given to Complainant established that the MOROCCANOIL Mark and related products were well-known throughout the world prior to Respondent's registration of the Disputed Domain Name.
Complainant asserts that Respondent lures Internet users to the Respondent's website by creating a likelihood of confusion with the MOROCCANOIL Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainant further asserts that Respondent is likely connected to another infringing website at the domain name which is the subject of a separate but related UDRP proceeding. On each website connected to the domain names, the same name, bank information, and phone numbers are listed under the method of payment. Together both websites are inflicting harm on the MOROCCANOIL Mark and Complainant's image. B. Respondent
Respondent's emails of December 2, 2015 and December 4, 2015 state that Respondent is not selling any products on the website to which the Disputed Domain Name resolves. This statement does not directly address Complainant's contentions and does constitute a response to the Complaint. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Respondent is not obliged to participate in this proceeding, but when it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. (See Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.)
Even though Respondent has failed to file a response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Doman Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the MOROCCANOIL Mark. Trademark registrations serve as prima facie evidence of Complainant's ownership and the validity of the MOROCCANOIL Mark.
Previous panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MOROCCANOIL Mark pursuant to the Policy, paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464.
The Panel finds that the entirety of Complainant's MOROCCANOIL Mark is contained in the Disputed Domain Name and that the addition of the geographical identifier "-Bangkok" is non-distinctive.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the MOROCCANOIL Mark.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the MOROCCANOIL Mark pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy, paragraph 4(c) lists three nonexclusive circumstances for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant contends that Respondent registered and is using the Disputed Domain Name, together with Complainant's logos and pictures of Complainant's products to attract customers in search of Complainant's products. Complainant further contends that such use cannot be considered a bona fide offering of goods or services.
Complainant alleges that Respondent is not the owner or beneficiary of a common law trademark or service mark, because Respondent is not commonly known by the Disputed Domain Name. Furthermore, Complainant alleges that Respondent has no trademark or service mark registrations that are identical or similar to the Disputed Domain Name. Complainant further alleges that Respondent has not received any authorization or consent, express or implied, to use the MOROCCANOIL Mark, Complainant's logos or Complainant's company name in the Disputed Domain Name or in any other manner.
Complainant asserts that Respondent lures Internet users to the Respondent's website by creating a likelihood of confusion with the MOROCCANOIL Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainant further asserts that Respondent is likely connected to another infringing website under the domain name which is the subject of a separate but related UDRP proceeding. On each of the websites linked to the domain names, the same name, bank information, and phone numbers are listed under the method of payment. Together both websites are inflicting harm on the MOROCCANOIL Mark and Complainant's image and demonstrate the commercial intent of Respondent.
The Panel finds that Complainant has sustained its burden of establishing a prima facie case that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent did not reply to Complainant's contentions.
Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name.
As set forth above, Complainant asserts that Respondent lures Internet users to the Respondent's website by creating a likelihood of confusion with the MOROCCANOIL Mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. Complainant further asserts that Respondent is likely connected to another infringing website associated with the domain name which is the subject of a separate but related UDRP proceeding. On each of the websites linked to the domain names, the same name, bank information, and phone numbers are listed under the method of payment. Together both websites are inflicting harm on the MOROCCANOIL Mark and Complainant's image and demonstrate the commercial intent of Respondent.
Complainant further contends that it has received worldwide recognition for its MOROCCANOIL Mark since 2007 and has earned several awards, enjoyed celebrity endorsements, and received a substantial amount of press coverage. The wide range of press coverage and awards given to Complainant established that the MOROCCANOIL Mark and related products were well-known throughout the world prior to Respondent's registration of the Disputed Domain Name.
Respondent has not replied to Complainant's contentions.
The Panel finds that the uncontested allegations of Complainant are sufficient to meet the elements of the Policy, paragraph 4(b)(iv) which states:
(iv) by using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product
Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated that Respondent registered and used the Disputed Domain Name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For 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, , be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: December 23, 2015
Full & Egal Universal Law Academy