The Complainants are 3903150 Canada Inc. doing business as Moroccanoil of Montreal, Quebec, Canada, Moroccanoil, Inc. of Los Angeles, California, United States of America, and Moroccanoil Israel Ltd. of Rishon Lezion, Israel, represented by BCF LLP, Canada.
The Respondent is Steven Rich, DomainRegPA SA of Willemstad, Curacao, Netherland Antilles, Overseas Territory of the Netherlands.
The disputed domain names, <moroccanhairdirect.com>, <moroccanhairsolution.com>, <moroccanhairtreatment.com>, and <moroccanoildirect.com> (the “Domain Names”), are registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2010. On February 15, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 16, 2010, the Registrar transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 February 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 16, 2010.
The Center appointed Tony Willoughby as the sole panelist in this matter on March 16, 2010. 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.
The Complainants are sister companies under common ownership. The Panel proposes to treat them as one. They are engaged in the marketing of hair care products under the trade mark MOROCCANOIL.
The Complainants formally adopted the trading name “Moroccanoil” in Canada on October 3, 2006. The Complainants advertise and promote their products online at a website connected to their domain name <moroccanoil.com>, a domain name which they registered on March 7, 2005 (according to the Complaint and the InterNIC WhoIs database).
The Complainants are the registered proprietors in the United States of America, Canada and many other countries around the world of a large number of trade marks of or including the word/name, “moroccanoil”, one of which is European Community Trade Mark No. 6492185 MOROCCANOIL (word) which was applied for on December 6, 2007 and which came through to registration on September 18, 2008. The registrations are primarily for hair care products.
The Complainants have put before the Panel substantial evidence to demonstrate that between March 2007 and June 2009, the month in which the first of the Domain Names was registered, the Complainants' MOROCCANOIL hair care products achieved significant exposure in North America at trade shows and in magazines.
On December 23, 2008 a judge in a California District Court, on an application for an interim injunction, issued a decision in a civil proceeding brought by one of the Complainants against two companies, one of which was named Moroccan Gold LLC, over the defendants' sale of competing products under the names MOROCCAN OIL, MOROCCAN GOLD and MOROCCAN MIRACLE OIL. The causes of action included claims for trade mark infringement, common law trade mark infringement and unfair competition. The validity of the Complainants' trade mark was attacked on the basis that the Complainants' trade mark was descriptive, the Complainants' products containing argan oil from Morocco. That attack failed and the interim injunction was granted.
The Complainants claim that by mid-2009 their MOROCCANOIL hair care products were very well-known in North America and had achieved significant sales success. These claims have not been challenged by the Respondent, are consistent with the substantial body of promotional material that has been put before the Panel and the Panel accepts them as factually accurate.
Three of the Domain Names, namely <moroccanhairdirect.com>, <moroccanhairsolution.com>, and <moroccanoildirect.com>, are all registered in the name of the Respondent, whereas <moroccanhairtreatment.com> is registered in the name of ‘Whois Privacy Protection Service, Inc.'. The Complainants have adduced sufficient evidence (a WhitePages search result and the content of the websites connected to the Domain Names) to demonstrate to the satisfaction of the Panel that all the Domain Names are under the common ownership/control of the Respondent as also confirmed by the Registrar in its email of February 16, 2010.
The Domain Names were registered on various dates between June 2, 2009 and, it appears, October 1, 2009 and as at the date of the Complaint were all connected to websites promoting the sale of Moroccan oil products (not being products of the Complainants) to consumers in the United States. The prices were quoted in United States dollars and the expressions of customer satisfaction were all from customers located in the United States.
The Complainants contend that the Domain Names are identical or confusingly similar to a trade mark in which the Complainants have rights.
The Complainants further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Finally, the Complainants contend that the Domain Names were registered and are being used in bad faith.
The Respondent did not reply to the Complainants' contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered and are being used in bad faith.
NB The Panel's findings below should be read in conjunction with the Panel's factual summary as set out in section 4 above.
The Domain Names and each of them by their inclusion of the word “Moroccan” and their allusion to oils and/or hair care are identical or confusingly similar to the Complainants' registered trade mark, MOROCCANOIL. Were it necessary to do so, the Panel would have been prepared to find that the Complainants are likely to have developed common law trade mark rights in the United States in respect of the word “Moroccan” in relation to hair care products.
The evidence put forward by the Complainants strongly suggests that by the time that the Respondent launched his websites directed to United States consumers, the Complainants' MOROCCANOIL hair care products were very well-known in the United States. It appears to the Panel that the likelihood is that the Respondent, in registering and using the Domain Names as he was, was deliberately seeking to take a free ride on the back of the Complainants' goodwill. It seems inconceivable to the Panel that he could have registered any of the Domain Names (and least of all <moroccanoildirect.com>) without having known of (and specifically with a view to trading off the attendant goodwill of) the Complainants' range of products and their corresponding mark.
The Respondent has a case to answer. In the absence of an answer the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. An offering of goods or services launched on the back of a desire to take unfair advantage of a competitor's pre-existing reputation and goodwill cannot, in the view of the Panel, constitute a bona fide offering of goods and services for the purposes of paragraph 4(c)(i) of the Policy.
For the same reasons the Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <moroccanhairdirect.com>, <moroccanhairsolution.com>, <moroccanhairtreatment.com>, and <moroccanoildirect.com> be transferred to the Complainant 3903150 Canada Inc. doing business as Moroccanoil as requested by the Complainants.
Dated: March 28, 2010