The Complainant is Moroccanoil Israel Ltd., Israel, represented internally.
The Respondent is Domain Admin, CONG TY CO PHAN VONGROUP, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2020, 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 March 16, 2020 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 March 21, 2020. On March 16, 2020, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on March 17, 2020. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or ”UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 March 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2020. The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 24, 2020. 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, Moroccanoil Israel Ltd., specializes in developing, producing and marketing of hair and body care products. Since its establishment in 2007, the Complainant’s MOROCCANOIL hair and body care products have been sold in more than 100 countries and territories across the world. The Complainant owns numerous trademark registrations for MOROCCANOIL (and variations thereof) in Classes 03, 18, and 21 in over 80 countries, including, but not limited to, the United States of America trademark registration No. 3478807 registered on August 5, 2008, and International Registration Nos 973926 registered on August 07, 2008, and 1166518 registered on June 05, 2013 (for M MOROCCANOIL). The MOROCCANOIL trademark has also been protected in Viet Nam, where the Respondent resides. Further, the Complainant owns nearly 500 domain names featuring the element “moroccanoil”. The Respondent registered the Disputed Domain Name The Complainant contends that each of the three elements specified in Paragraph 4(a) of the Policy are satisfied in the present case, as follows: (i) The Disputed Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights. First, the Complainant contends that the Complainant is the registered owner of trademark registrations for MOROCCANOIL in numerous jurisdictions, including, but not limited to Viet Nam, where the Respondent resides. Secondly, the Complainant contends that the Disputed Domain Name is confusingly similar to the marks owned by the Complainant by arguing that: - The Disputed Domain Name reproduces entirely the registered trademark MOROCCANOIL of the Complainant; and - The addition of the word “vietnam” does not sufficiently distinguish the Disputed Domain Name from the MOROCCANOIL trademark. On the contrary, this term misleads the Internet users into thinking that the Disputed Domain Name is authorized by the Complainant, when this is not the case. - Finally, Respondent infringes upon the Complainant’s trademarks, copyrighted pictures and products on the associated website. Thus, the Disputed Domain Name is intentionally disrupting the Complainant’s business. (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled. First, the Complainant submits that according to the Complainant’s knowledge, the Respondent is not the owner or beneficiary of trade or service mark that is identical or similar to the Disputed Domain Name. Furthermore, the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to register a domain name incorporating its MOROCCANOIL trademarks (or a domain name which will be associated with these trademarks). (iii) The Disputed Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent purchased the Disputed Domain Name in attempt to attract customers intending to buy the Complainant’s products and being misled to believe that the Respondent’s website is authorized to sell the Complainant’s products. Secondly, the Complainant submits that the Respondent makes use and infringes upon the Complainant’s copyrighted pictures and logos, in an attempt to falsely legitimize their sale of unofficial and unauthorized products on the infringing website. The Respondent lures Internet users to their website by attempting to create a likelihood of confusion with the Complainant’s MOROCCANOIL trademarks. Finally, the Complainant asserts that the Complainant’s MOROCCANOIL marks were well-known throughout the world due to its wide range of press coverage and awards since 2007, prior to the Respondent’s registration of the Disputed Domain Name. Consequently, the Complainant contends that three elements under the Policy have been established and requests for a transfer of the Disputed Domain Name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issues (i) Language of the Proceeding The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement was Vietnamese. As the Complaint was filed in English, the Center, in its communication dated March 16, 2020, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding. On March 17, 2020, the Complainant submitted a request that English be the language of the proceeding. 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 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. Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003‑0679). In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to: (i) the fact that the Complainant, an Israeli business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; (ii) the English language is quite popular in Viet Nam, where the Respondent is located, and the Disputed Domain Name itself contains English words “moroccan” and “oil”, as well as it is evidenced by the Complainant that at the date of filing the Complaint, the website under the Disputed Domain Name contained English contents; these suggest that the Respondent has knowledge of the English language and will be able to communicate in English; (iii) the Respondent did not object for English to be the language of the proceeding and did not submit a response in either English or Vietnamese. Therefore, in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. (ii) The Respondent’s Failure to Respond The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010‑1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar The Complainant is required to establish the following: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark. First of all, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to MOROCCANOIL, well before the Disputed Domain Name was registered. Second, the Disputed Domain Name comprises the Complainant’s MOROCCANOIL trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix “vietnam”, which is the name of the country where the Respondent resides. The Panel finds that “moroccanoil” remains the dominant element in the Disputed Domain Name. It is well established that the addition of a country name “vietnam”, to a trademark does not prevent confusing similarity, as it was found in previous UDRP decisions (see, e.g., Sika AG v. Gia Nhu, Cong Ty Co Phan Truyen Thong Suc Manh Viet,WIPO Case No. D2019-2224; NTT DOCOMO, Inc. v. Nguyen Minh Dai, Vien May Tinh, WIPO Case No. D2018-2477). Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012‑2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s MOROCCANOIL trademarks, and the first element of the Policy is established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including: “(i) before any notice to you 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 (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 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.” The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no response was submitted for evidence to the contrary. Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights featuring the element “moroccanoil” in any jurisdiction. A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”), including: - the Respondent must actually be offering the goods or services at issue; - the Respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); - the site itself must accurately disclose the Respondent’s relationship with the trademark owner; and - the Respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name. In this particular case, it is well proved and evidenced by the Complainant that the Disputed Domain Name used to resolve to an online shop of the Respondent, as shown in the Annex 8 of the Complaint. On such website, the Panel finds the Respondent did not place any statement or disclaimer disclosing accurately its relationship with the Complainant. Further, the website under the Disputed Domain Name also contained the Complainant’s trademark MOROCCANOIL as well as its official marketing material and product images. In addition, the website under the Disputed Domain Name stated that “Moroccanoil Việt Nam - Mỹ phẩm tóc chính hãng của Moroccanoil Israel” (in English “Moroccanoil Viet Nam - Authentic hair cosmetics of Moroccanoil Israel”). This indication may mislead consumers into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality. With such a view, the Panel finds that the unauthorized use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy. Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name. Also, no evidence or argument supports that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the MOROCCANOIL trademarks and had an intention to gain profit by riding on the goodwill and reputation of the Complainant. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element, paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four 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, including: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you 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 or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”. The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions. The Panel further finds that the Complainant’s MOROCCANOIL trademarks have been registered and used in numerous countries, including, but not limited to Viet Nam, where the Respondent resides. The Disputed Domain Name comprises the MOROCCANOIL trademark in its entirety, adding only a country name “vietnam”. Given the extensive use of the MOROCCANOIL trademarks for hair care products by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website there under, the Panel is of the view that the Respondent obviously knew of the Complainant and its MOROCCANOIL trademark when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill. On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to an inactive website. However, it is well proved and evidenced by the Complainant that the website under the Disputed Domain Name offered the hair care products branded with the Complainant’s MOROCCANOIL trademark. In addition to the adoption of the Complainant’s MOROCCANOIL trademark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s trademarks, advertising images on the website and falsely represented itself like an affiliate or distributor of the Complainant by the statement “Moroccanoil Việt Nam - Mỹ phẩm tóc chính hãng của Moroccanoil Israel” (in English “Moroccanoil Viet Nam - Authentic hair cosmetics of Moroccanoil Israel”). With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is an indication of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent. Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 Pham Nghiem Xuan Bac
Sole Panelist
Date: May 8, 2020
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