The Complainants are Moroccanoil, Inc. of Los Angeles, California, United States of America, Moroccanoil Canada Inc. of Montreal, Quebec, Canada, and Moroccanoil Israel Ltd. of Rishon Lezion, Israel, represented internally.
The Respondent is Domains By Proxy, LLC / Mac Davis of Scottsdale, Arizona, United States of America, and Seattle, Washington, United States of America, respectively. 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 October 5, 2012. On October 8, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 2012, 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 October 12, 2012, 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 October 16, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2012.
The Center appointed Fleur Hinton as the sole panelist in this matter on November 27, 2012. 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 Complainants have been offering products for the hair including: shampoo, conditioner, oil treatment and styling cream, since 2007. They have been promoting them on English, French and Spanish websites since 2007, and have recently commenced to offer them on a Portuguese language website. On March 7, 2005, Moroccanoil Israel Ltd. acquired the domain name . Moroccanoil Israel Ltd. also owns registrations for the trade mark MOROCCANOIL in Canada, Australia, the European Community, Hong Kong, China Japan, Mexico, New Zealand, the Philippines, Singapore and the United States, as well as a number of other countries. In 2007 sales figures for MOROCANOIL products were in excess of USD 10,000,000 and in 2011 were in excess of USD 140,000,000. Apart from their promotion on websites, the products bearing the trade mark MOROCCANOIL have also been promoted in magazines including Instyle, Cosmopolitan, Vanity Fair, American Salon, Lucky, People and Glamour and Allure. Some of these magazines are specialist publications for people in the hair styling industry.
In addition, the products have been used by models and celebrities in Hollywood including for the 2011 Screen Actors’ Guild Awards. Since 2007 the Complainants have also participated in a number of top fashion shows which have been well-publicized.
The disputed domain name was registered on February 18, 2012. At the time of filing Domains By Proxy of Scottsdale, Arizona, USA, a privacy registration service appeared as registrar of the disputed domain name. The Registrar with which the domain name is registered is GoD, LLC. “Mac Davis” was disclosed as the underlying registrant of the disputed domain name in response to the Center’s request for registrar verification. The two entities shall be hereinafter referred to as the “Respondent”.
The Respondent’s use of the disputed domain name leads to a website which purports to be of “reviews” of “Moroccan Oil” products by people who have used them and have comments to make and also offers products for sale. The Complainants say that it is unclear to them (and therefore, presumably to the ordinary web browser) whether the products being “reviewed” or offered by the Respondent are genuine products which the Respondent has obtained or counterfeit products. 5. Parties’ Contentions A. Complainant
i. Identical or confusingly similar
The Complainants submit that the dominant part of the disputed domain name contains the entirety of their trade mark, MOROCCANOIL. They argue that the addition of the word “review” is insufficient to distinguish the disputed domain name from their trade mark because it is generic. In support of this they refer to Amphenol Corporation v. Applied Interconnect Inc., WIPO Case No. D2001-0296. In that case the owner of the trade mark AMPHENOL objected to the Respondent’s domain name . The panel in reaching its decision in that case referred to the case of Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413, in which the panel found that the addition of words such as “store” and “fashion” was not sufficient to avoid confusing similarity with the trade mark CHANEL. On that basis the panel deciding on the disputed domain name found that the addition of some generic term did not suffice to avoid confusing similarity with the trade mark AMPHENOL. The Complainants submit that the present situation is analogous with those situations, and the many other cases in which it has been found by a UDRP panel that the addition of a generic term does not suffice to distinguish between the trade mark of a complainant and a domain name of a respondent.
The Complainant also says that the use of the word “review” as part of the domain name would lead web browsers to believe that the website to which the disputed trade mark led would provide reviews of the various MOROCCANOIL trade marked products. This impression would be increased by the fact that there do not appear to be any other trade mark registrations in the world for MOROCCANOIL.
In addition, the Complainants refer to the preliminary injunction granted by the United States District Court of the Central District of California against a third party in a trade mark infringement case based on that party’s use of MOROCCAN GOLD and MOROCCAN MIRACLE OIL, on the basis that the Complainants would be likely to succeed in trade mark infringement on the merits.
ii. The Respondent has no rights or legitimate interests in respect of the trade mark
The Respondent had only recently acquired the disputed domain name, on February 18, 2012, which is in contrast to the Complainants’ registration of on March 7, 2005.
The Complainants registered the business name in the Quebec registry on October 3, 2006.
The Complainants have lodged over 50 trade mark applications world-wide, the earliest of which was lodged on November 15, 2006.
The Complainant Moroccanoil Israel Ltd. acquired the domain name on August 3, 2010.
The trade mark MOROCCANOIL is an expression coined by the Complainants which they commenced using in respect of their products since at least as early as 2007. The Complainants have no relationship with the Respondent and have not authorized it to use the disputed domain name.
The country of Morocco is not known as one which has a particular reputation in respect of hair care products. Therefore, there is no reason why anyone else would need to register a domain name incorporating “moroccanoil” in relation to websites associated with hair care products.
The Respondent cannot claim that it is making a noncommercial use of the disputed domain name with no intent to gain commercially because it is misleadingly trying to divert Internet users by using the Complainants’ good will and reputation in the Complainants’ trade mark.
iii. The Domain Names were registered and are being used in bad faith
The Respondents are using the disputed domain name incorporating the Complainants’ trade mark to sell other brands of hair care products.
The Complainants’ trade mark is used for high quality hair products which are known around the world and it is plain, therefore, that the Respondent has registered it, and is using it, in a manner to attract Internet users to its website for commercial gain by deceiving consumers into believing that they are visiting the Complainants’ website.
The use of the disputed domain name causes Internet users to believe that they are visiting a website which sells only the Complainant’s products. In fact, its websites offer the “Argan” based products of other traders under the title, “Compare the top three Moroccan Argan Oils”. There are various types of hair product that use “Argan oil” which is one of the ingredients in the Complainants’ products.
The brown bottle in which the Respondent offers its products is similar in shape and size to the Complainants’ 100 ml bottle of MOROCCANOIL oil treatment. The Respondent’s bottle also has the distinctive orange and turquoise colours and wording which is similar. It also bears inscriptions similar to those used by the Complainants on their bottles. This combination of factors is likely to lead consumers to believe that they are buying the Complainants’ products although the Respondent does not have any relationship with the Complainant. In addition, none of the Complainants’ authorized merchants is allowed to sell the Complainants’ products on the Internet. The Complainants do not know if these goods being offered are diverted genuine products of the Complainants or counterfeits. The Complainants are concerned about this, as if the products are counterfeits, they have no way of knowing what the quality of the products is and are therefore likely to have their reputation damaged if the Respondent’s products are of poor quality.
The Respondent claims on its website that it is offering “Moroccan Oil” products at a low price whereas, in fact, the Respondent’s offering is only 80 cents less than the retail price offered by the Complainants.
Further, the Respondent’s website has “read more” buttons. When a consumer clicks on one of these buttons appearing on the various products offered on the website, she is taken to another page where sheis supposedly given further information about each of the products and its benefits. There is also a page purporting to be a “Customer Service” page which claims to provide information on the alleged health benefits of the Complainants’ products. The Complainants find this very worrying as these claims would appear to the consumer to come from the Complainants when in fact they do not. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The Policy requires that the Panel make its finding on the basis of the following:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainants’ have rights;
(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 only difference between the Complainants’ trade mark MOROCCANOIL and the disputed domain name is that the latter includes the generic term “review”. It has been held many times in UDRP decisions including that in Amphenol Corporation v. Applied Interconnect Inc., WIPO Case No. D2001-0296, referred to in the Complainants’ submissions, that the mere addition of a generic term to a trade mark in order to form a domain name does not usually suffice to prevent the disputed domain name from being confusingly similar to the trade mark in which the complainant has rights. The Panel finds that the disputed domain name is confusingly similar to the disputed domain name.
In reaching this decision, the Panel has not taken any account of the court proceedings in California in relation to alleged trade mark infringement as they are not relevant to the this proceeding. B. Rights or Legitimate Interests
The Complainants have not authorized the use which the Respondent has made of its trade mark in the disputed domain name, and the Respondent has no relationship, commercial or otherwise, with the Complainants. The disputed domain name was registered nearly 5 years after the Complainant commenced using its trade mark MOROCCANOIL and setting up its website.
The Respondent has not lodged its own submissions and has not provided any information as to any rights or legitimate interests in the disputed domain name which it may claim. Therefore, the Complainants need only establish a prima facie case that the Respondent has neither rights nor legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (“WIPO Overview 2.0”). In this instance the Complainant has shown that it has trade mark registrations in many countries and that the Respondent has a website in respect of which a domain name that is confusingly similar to the Complainant’s trade mark is being used in relation to the goods covered by the Complainants’ trade marks. In The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 the panel found that:
“To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a “bona fide” offering of goods or services. In some circumstances, a website advertising and selling financial magazines or financial products and services may constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not “bona fide” within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainant’s well known trademark and its domain name; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent or its websites or their content; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its websites. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for its use of the disputed domain name for its websites.”
The Panel finds that the Complainant has established an undisputed, prima facie case and finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainants have established that the disputed domain name is confusingly similar to the Complainants’ trade mark and that the Respondent has no rights or legitimate interests in the disputed domain name. In addition, the Respondent has declined to take part in these proceedings.
The Respondent has registered and used a domain name which incorporates the Complainants’ trade mark. It has been offering goods for sale on that website by reference to the Complainants’ trade mark and others. It had no authority to use the Complainants’ trade mark for the purpose of registering a domain name. Further, it had no authority to use the domain name in respect of a website selling products by reference to the Complainants’ trade mark, whether those goods be genuine goods or counterfeit. In the absence of any evidence to the contrary, the Panel finds that the Respondent must have had the Complainants or its trademarks in mind when registering the disputed domain name to attract, for commercial gain, Internet users to the disputed domain name, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or the products offered there.
Under these circumstances the Panel finds that the domain name was registered and 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 Complainants.
Fleur Hinton
Sole Panelist
Date: December 19, 2012
Full & Egal Universal Law Academy