The Complainant is Moroccanoil Israel Ltd., Israel, internally represented.
The Respondent is Oreca V\u0169, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2019. On July 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2019.
The Center verified that the Complaint together with the amended 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 July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019. In response to the Notification of Respondent Default, the Center received an email apparently from the beneficial holder of the disputed domain name, stating that they bought the disputed domain name from the Registrar and it belonged to them.
The Center appointed Antony Gold as the sole panelist in this matter on August 9, 2019. 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 was formed in 2007. It develops, produces and markets hair and body care products. Since 2007 the Complainant’s products have been sold under the trade mark MOROCCANOIL and they are now sold in multiple territories worldwide. The Complainant has registered in many countries both the word mark MOROCCANOIL, a stylized version being widely used by it, as well as a stylized “M” logo. Its word marks include European Union Trade Mark No. 12393955 for MOROCCANOIL. This is registered in classes 11, 18 and 21. The Complainant also owns an extensive portfolio of domain names which comprise or include the word MOROCCANOIL, including . The Complainant has registered the copyright for the appearance of the label and bottle for one of its haircare products, in both China and the United States of America.
The disputed domain name was registered on November 13, 2018. It resolves to a website, which features text in both Vietnamese and English. The banner at the top of the home page of the website uses the stylized version of the Complainant’s MOROCCANOIL trade mark and the same stylized mark appears in the same position at the top of subsequent pages. The website offers for sale hair and body care products which are branded “Moroccanoil” and use the Complainant’s stylized “M” logo. One of these products appears identical to that for which the Complainant has secured a copyright registration in China. Other products appear identical to the images of the Complainant’s products which feature in various press articles about the Complainant and its product range. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its portfolio of MOROCCANOIL trade marks, details of one of these marks having been set out above. It says that the word “moroccanoil” is the most distinctive word in the disputed domain name and will cause customers to be confused when searching for the Complainant’s products. The mere addition of the word “daugoi” does not sufficiently distinguish the disputed domain name from the Complainant’s MOROCCANOIL trade mark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. To its knowledge, the Respondent is not the owner or beneficiary of a trade or service mark that is identical or similar to the disputed domain name. The Respondent has not received either express or implied consent to use the Complainant’s trade marks or logos, within its domain name or otherwise.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was acquired by the Respondent in an attempt to attract customers who wished to buy the Complainant’s products and were misled into believing that the Respondent’s website was authorized to sell them. Moreover, at the time of acquisition of the disputed domain name, the Complainant was already very well-known. The Respondent has made unlawful use of the Complainant’s logos and product graphics to deceive and confuse those potential customers and thereby take advantage of the Complainant’s well-established brand. The Respondent has lured Internet users to its website by attempting to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of products on it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, on August 7, 2019, an individual who appears to be the beneficial holder of the disputed domain name indicated that they bought the disputed domain name from the Registrar and that it belongs to them. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided a schedule of the trade marks it owns for MOROCCANOIL, including the mark in respect of which details are set out above. This establishes the Complainant’s rights in MOROCCANOIL.
For the purpose of considering whether the disputed domain name is identical or similar to the Complainant’s trade mark, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as this is a technical requirement of registration. Whilst it is not known whether “daugoi” has any meaning in Vietnamese, this would not, in fact, have any impact on the approach to be adopted when considering whether the disputed domain name is confusingly similar to the Complainant’s trade mark. In this respect, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The Complainant’s MOROCCANOIL trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. These are, summarized very briefly: (i) if the respondent has been using the domain name in connection with a genuine offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name. If a complainant establishes a prima facie case that a respondent lacks rights or a legitimate interest in a domain name, the burden of production shifts to the respondent.
Dealing with these circumstances in reverse order, paragraph 4(c)((iii) is inapplicable as the use of the disputed domain name is commercial in character. There is no evidence to suggest that the Respondent has been commonly known by the disputed domain name and so paragraph 4(c)(ii) is equally inapplicable.
So far as paragraph 4(c)(i) is concerned, it would have been helpful for the Complainant to have provided an English language translation of the Vietnamese content of, at least, the home page of the website to which the disputed domain name resolves. Notwithstanding the absence of a translation, the website to which the disputed domain name resolves, copies the look and feel of the Complainant’s official website and prominently displays the Complainant’s trade mark. This suggests an intention to associate the website with the Complainant’s trade mark by creating confusion among Internet users. In addition, the fact that the only branding on the website appears to be MOROCCANOIL, coupled with the fact that none of the Complainant’s assertions have been challenged, suggests, on balance, that the intention behind the website has been to present itself as the Complainant’s rather than simply as a dealer in its products.
The Complainant has also not provided any evidence that the products offered for sale are counterfeit. As explained at section 2.13.2 of the WIPO Overview 3.0: “Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default”. But, whether or not the products offered for sale are the Complainant’s products or counterfeit, a website intended to create the erroneous impression that it is owned and/or controlled by the Complainant does not comprise a bona fide offering of goods and services.
For these reasons, and as the Complainant’s assertions have not been challenged, the Panel finds that there are no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the disputed domain name falls has been put within these circumstances in that it resolves to a website which misleadingly purports to be operated by, or on behalf of, the Complainant. The belief of Internet users that this is the case will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s MOROCCANOIL trade mark. The underlying motivation has evidently been to derive commercial advantage from its claimed association with the Complainant and this points clearly to bad faith registration and use; see, by way of example, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447. Moreover, there is no conceivable good faith use which could have been made of the disputed domain name.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 the Complainant.
Antony Gold
Sole Panelist
Date: August 20, 2019
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