Moroccanoil, Inc., Moroccanoil Israel Ltd, 3903150 Canada Inc., d/b/a Moroccanoil v. Above.com Domain Privacy
Claim Number: FA1103001378443
Complainant is Moroccanoil, Inc., Moroccanoil Israel Ltd, 3903150 Canada Inc., d/b/a Moroccanoil (“Complainant”), represented by Kevin R. Keegan, California, USA. Respondent is Above.com Domain Privacy (“Respondent”), represented by Peter Smith, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <morocanoil.com>, registered with Above.Com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 17, 2011, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <morocanoil.com> domain name is registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the name. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@morocanoil.com. Also on March 18, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received by the National Arbitration Forum and determined to be complete on April 5, 2011.
An Additional Submission of Complainant was received by the national Arbitration Forum on April 11, 2011. While that submission was not in full compliance with the requirements of Supplemental Rule 7, the panel has determined to consider the contentions made therein for whatever value they may have.
On April 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, as follows:
Since early 2007, Complainant has offered throughout the world high quality hair care products such as oil treatment, conditioner, styling cream and shampoo under the trademark MOROCCANOIL.
Complainant is the owner of trademark registrations for the MOROCCANOIL mark worldwide, including Registry No. 1221017, on file with the Canadian Intellectual Property Office as of January 24, 2008.
Complainant’s products sold in association with the mark MOROCCANOIL have been regularly featured and advertised since 2007 in well established
fashion magazines and in general public interest publications such as
Shape, Glamour, Elle, Salon Magazine, Lucky, People and US Weekly.
Complainant has also participated in several high exposure fashion trade shows since 2007.
Complainant’s rights in the MOROCCANOIL trademark have been established in prior UDRP proceedings.
Respondent registered the disputed <morocanoil.com> domain name on February 12, 2008.
The disputed domain name is simply a typographical misspelling of the MOROCCANOIL trademark.
Respondent’s registration of the contested domain name is a form of typo-squatting, the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark.
By this device, Respondent seeks to attract the attention of and confuse Internet users seeking Complainant’s website, thus to divert them to Respondent's competing website.
Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services.
Respondent currently uses the domain name to display pay-per-click advertising for products that compete with Complainants' products.
Complainant has not licensed or otherwise permitted Respondent to use the
MOROCCANOIL trademark or to apply for or use any domain name incorporating the mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent's domain name has been registered and is being used in bad faith.
B. Respondent
Respondent contends, among other things, that:
While Complainant argues that its MOROCCANOIL trademark and the <morocanoil.com> domain name are identical, that alone is not grounds for cancelation of a pre-existing domain name registration.
Complainant has submitted no evidence that its MOROCCANOIL mark is famous and deserving of a global monopoly of protection in every top-level domain.
Complainant has only demonstrated that its MOROCCANOIL mark may be a popular brand in Canada, not the rest of the world.
Complainant has been in business for only approximately three years and first registered its mark in January 2008.
Complainant is a relatively new company and could hardly be perceived as globally famous.
Respondent has not intentionally registered as a domain name any trademark
holder's mark.
Respondent has not registered a trademark holder's name in an attempt to extort money from the trademark holder by attempting to sell the domain name to the trademark holder.
Respondent has not offered to sell this domain name.
Respondent has merely registered common words and phrases that it believes may have value.
There is nothing improper or unlawful in doing so.
Respondent has not acted in bad faith.
Respondent registered this domain name without knowledge of Complainant.
The domain name was registered only a month later than Complainant registered its MOROCCANOIL mark.
C. Additional Submissions
In its Additional Submission, Complainant further asserts, inter alia, as follows:
Respondent tacitly admits to the majority of the allegations in the Complaint by failing to address them.
Respondent is a well-known typo-squatter, having been a Respondent in nearly 200 UDRP proceedings, and having been forced to transfer hundreds of domain names that were deemed to be intentional typographical misspellings.
Respondent does not dispute that Complainant has valid rights to the mark
MOROCCANOIL.
Respondent admits that the MOROCCANOIL mark was registered prior to the registration of the <morocanoil.com> domain name.
Respondent does not attempt to dispute the near complete identity between the <morocanoil.com> domain name and Complainant’s MOROCCANOIL mark.
Respondent has not presented any evidence of rights to or a legitimate interest in the <morocanoil.com> domain name.
Respondent does not dispute that it has registered an intentional misspelling of the MOROCCANOIL mark or that Respondent uses <morocanoil.com> to host pay-per-click advertising.
Respondent admits that he purchased the domain name because he "believes
[the domain name] may have value."
Respondent has presented no evidence to suggest that the value it anticipated arises from anything other than attracting Internet users who inadvertently misspell the MOROCCANOIL mark in their web browsers.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MOROCCANOIL mark under Policy ¶ 4(a)(i) by registering that mark with a national trademark authority, the Canadian Intellectual Property Office. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding a complainant’s registrations for its HONEYWELL mark throughout the world sufficient to establish that complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Respondent’s <morocanoil.com> domain name is confusingly similar to Complainant’s MOROCCANOIL mark. The disputed domain name constitutes a mere misspelling of the mark by removing a letter “c.” This difference fails to differentiate the disputed domain name from Complainant’s mark, thereby rendering the two confusingly similar under Policy ¶ 4(a)(i). Further, the addition of a generic top-level domain (“gTLD”) such as “.com” is not relevant to a Policy ¶ 4(a)(i) analysis. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that a respondent’s <hacrs.com> domain name was confusingly similar to a complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The panel therefore finds that, under Policy ¶ 4(a)(i), Respondent’s domain name
<morocanoil.com> is confusingly similar to Complainant’s MOROCCANOIL trademark.
Under this head of the Policy, Complainant must in the first instance make out a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain in issue. The burden then shifts to Respondent to show that it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name before the burden shifts to that respondent to show that it does have recognizable rights or legitimate interests in the domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has met its prima facie burden on the point of Respondent’s lack of rights to or legitimate interests in the contested domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent does not deny this assertion. Complainant also asserts that it has not licensed or otherwise authorized Respondent to use Complainant’s mark in any way. Respondent likewise does not deny this assertion. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Above.com Domain Privacy,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
Complainant also argues that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <morocanoil.com> domain name. Complainant asserts, in particular, that Respondent’s domain name resolves to a pay-per-click website which offers links to the websites of Complainant’s commercial competitors. Complainant further alleges that Respondent receives click-through fees for each Internet user diverted to the linked sites. Respondent does not deny these allegations. We conclude, therefore, that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <morocanoil.com> domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert Internet users seeking that complainant’s goods and services to websites competing with the business of that complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), where a respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant also contends that Respondent is engaging in the practice of typo-squatting, that is, attempting to capitalize on Complainant’s mark by registering a domain name that contains a common misspelling of that mark. Respondent’s counter-argument on this point is unpersuasive. We conclude, therefore, that Respondent does not have rights to or legitimate interests in the domain name under Policy ¶ 4(a)(ii) because Respondent’s registration and use of the <morocanoil.com> domain name constitutes typo-squatting, which is evidence of a lack of such rights or legitimate interests. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant's LTD COMMODITIES mark and that:
‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.
The panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(ii).
Complainant has presented evidence indicating that Respondent is using the disputed domain name to display links to the websites of Complainant’s commercial competitors. Respondent makes no serious effort to deny this accusation. Therefore, and because we conclude that this behavior disrupts Complainant’s business, we also conclude that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) by diverting Internet users to the websites of business competitors of Complainant. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
In addition, Respondent’s use of the disputed domain name as a links directory results in Respondent’s commercial benefit through the receipt of pay-per-click fees. Respondent is thus attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion by misspelling Complainant’s mark in the domain name at issue. We conclude therefore that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by using domain name to display links to the websites of competing businesses, presumably profiting from such use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Finally, we are convinced on the record before us that Respondent is guilty of typo-squatting by virtue of its registration and use of a domain name that contains a common misspelling of Complainant’s mark. This is further evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting in its purest form); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent engaged in typo-squatting, which is evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii)).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <morocanoil.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 25, 2011
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