Moroccanoil, Inc., Moroccanoil Israel Ltd, 3903150 Canada Inc., d/b/a Moroccanoil v. Y.P. Golan Trade LTD
Claim Number: FA1103001381138
Complainant is Moroccanoil, Inc., Moroccanoil Israel Ltd, 3903150 Canada Inc., d/b/a Moroccanoil (“Complainant”), represented by Kevin R. Keegan of CONKLE, KREMER & ENGEL Professional Law Corporation, California, USA. Respondent is Y.P. Golan Trade LTD. (“Respondent”), Israel.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <royalmoroccanoil.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2011; the National Arbitration Forum received payment on March 30, 2011.
On March 31, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <royalmoroccanoil.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 April 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@royalmoroccanoil.com. Also on April 4, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <royalmoroccanoil.com> domain name is confusingly similar to Complainant’s MOROCCANOIL mark.
2. Respondent does not have any rights or legitimate interests in the <royalmoroccanoil.com> domain name.
3. Respondent registered and used the <royalmoroccanoil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Moroccanoil, Inc., Moroccanoil Israel Ltd, 3903150 Canada Inc., d/b/a Moroccanoil, sell hair products such as oil treatments, conditioner and styling creams throughout the world. For the purposes of these proceedings, the Panel elects to treat the Complainants as a single entity due to the intimate business relationship between the separate Complainants. Complainant conducts its business under the MOROCCANOIL mark which is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,478,807 registered August 5, 2008).
Respondent registered the <royalmoroccanoil.com> domain name on December 27, 2009. The disputed domain name resolves to a website featuring links to products and businesses that compete with Complainant’s hair product business.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the MOROCCANOIL mark based on its registration of the mark with the USPTO (Reg. No. 3,478,807 registered August 5, 2008). The Panel finds that Complainant has submitted sufficient evidence to establish rights in the because registration with a federal trademark authority is sufficient action to establish rights in a mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s domain name is confusingly similar to the MOROCCANOIL mark. Respondent merely added the generic term “royal” to the beginning of Complainant’s mark. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that adding generic terms and a gTLD to an established mark do not prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant correctly points out that previous panels have found that a complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <royalmoroccanoil.com> domain name. However, the Panel elects to examine whether the record shows Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Next, Complainant alleges that Respondent is not commonly known by the disputed domain name and that Respondent is not authorized to use the MOROCCANOIL mark. Respondent failed to allege any evidence that would support a finding it is commonly known by the <royalmoroccanoil.com> domain name. Furthermore, the WHOIS information does not contain any evidence that Respondent is commonly known by the disputed domain name. Thus, under Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the <royalmoroccanoil.com> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends Respondent uses the disputed domain name to resolve Internet users to a directory containing hyperlinks to the websites of Complainant's competitors in the hair products business. The Panel infers that Respondent receives click-through fees for this redirection of Internet users. Therefore, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under 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 the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent’s <royalmoroccanoil.com> domain name resolves to a website featuring hyperlinks to the websites of Complainant’s competitors. Respondent’s disputed domain name registration seeks to profit from Internet users’ recognition of Complainant’s mark, while also disrupting Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The Panel infers that Respondent receives click-through fees from the hyperlinks posted on the website resolving from the <royalmoroccanoil.com> domain name. Internet users searching for Complainant may find Respondent’s website and will then become confused as to Complainant’s sponsorship of and affiliation with the disputed domain name, resolving website and posted hyperlinks. This confusion results in click-through fees for Respondent which leads the Panel to find that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <royalmoroccanoil.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 29, 2011
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