WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
3903150 Canada Inc. d/b/a Moroccanoil, Moroccanoil Canada Inc., Moroccanoil Inc. and Moroccanoil Israel Ltd. v. Jacob Miller
Case No. D2012-1847
1. The Parties
Complainants are 3903150 Canada Inc. d/b/a Moroccanoil, Moroccanoil Canada Inc., Moroccanoil Inc. and Moroccanoil Israel Ltd. of Montreal, Quebec, Canada, internally represented.
Respondent is Jacob Miller of Honolulu, Hawaii, United States of America, represented by Bond, Schoneck & King, PLLC, United States of America.
2. The Domain Name and Registrar
The disputed domain name <moroccohair.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2012. On September 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced September 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2012. The Response was filed with the Center October 15, 2012.
The Center appointed Roberto Bianchi, Tony Willoughby and David E. Sorkin as panelists in this matter on November 14, 2012. The Panel finds that it was properly constituted. Each member of 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
Since 2007, Complainants have been offering in several countries various hair care products under the trademark MOROCCANOIL.
Complainants own registrations for the MOROCCANOIL trademark in Canada, the United States of America and several other countries. Reference is made, for example, to Canadian Reg. No. TMA 734460, with registration date February 13, 2009, filed on November 15, 2006, covering hair care products, namely: oil, mask, moisture cream, curly hair moisture cream, curly hair mask, curly and damaged hair mask, glisten spray, owned by Complainant Moroccanoil Israel Ltd, and to United States (“U.S.”) Reg. No. 3478807, with registration date August 5, 2008, filed on March 5, 2007, covering hair conditioners, namely, curl creams, hydrating styling creams, intense moisturing masques, and styling and finishing oils, owned by O. Tal (Canada Individual).
Since 2007 until today, Complainants have made substantial marketing actions and incurred large expenses to market their MOROCCANOIL products.
Respondent is an individual affiliated with the U.S. distributor of hair products manufactured by Bingo Hair Cosmetic, a Chinese company. On the website at the disputed domain name, Respondent is marketing online Bingo’s products under the name “Morocco Argan Oil”.
Respondent registered the disputed domain name on April 24, 2012.
5. Parties’ Contentions
In their Complaint, Complainants contend the following:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights. Since as early as 2007, Complainants have been offering in numerous countries various high quality hair care products such as oil treatment, conditioner, styling cream, and shampoo, under the trademark MOROCCANOIL. Complainant Moroccanoil acquired the disputed domain name on March 7, 2005. Complainant Moroccanoil formally adopted the business name “Moroccanoil” in the Province of Quebec. Complainants are the owners of numerous trademark registrations in various countries around the world for the word mark MOROCCANOIL and of design marks comprising the word MOROCCANOIL. Most of those registrations issued from applications filed in 2007 and early 2008. The Canadian application was actually filed in November 2006. Those filings were made well before the registration of the disputed domain name (registered on April 24, 2012).
Complainants’ hair products sold in association with the trademark MOROCCANOIL are known as high quality products and principally sold by hairstylists in hair salons around the world. The MOROCCANOIL products quickly became a great worldwide success. These hair products have been regularly featured or advertised since 2007 in well-established printed and online fashion and entertainment magazines and certain general public interest publications such as Shape, Glamour, Elle, Salon Magazine, Lucky, People, and US Weekly.
The first and dominant part of the disputed domain name consists in the term “Morocco”, which closely matches the most important element of Complainants’ trademark, i.e. the word “Moroccan”. The terms “Morocco” or “Moroccan” do not have any particular reputation when used alone with regards to hair care and hair styling products. However, when used in connection with the term “oil”, they become very close to Complainants’ coined trademark MOROCCANOIL, which has acquired an important level of distinctiveness from the date of its registration for products in the field of hair styling and hair care. The addition of the generic word “hair” is not sufficient to avoid confusion. Respondent evidently makes reference to the category of products manufactured and distributed by Complainants, and consequently an average consumer is likely to be confused as the source of the hair solution sold under the disputed domain name.
In further support of the existence of confusion, Complainants refer to a preliminary injunction issued by the U.S. District Court for the Central District of California on December 23, 2008 in the context of a trademark infringement action brought by Complainant Moroccanoil Inc. further to the use of the trademarks MOROCCAN GOLD and MOROCCAN MIRACLE OIL in association with hair care products. In the context of that motion for preliminary injunction, the Court concluded that it was likely that Complainant Moroccanoil Inc. would succeed on the merits in demonstrating infringement of its registered trademark by the trademarks MOROCCAN GOLD and MOROCCAN MIRACLE OIL.
Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name has only been recently registered, namely on April 24, 2012. That is well after:
- The registration by Complainant Moroccanoil of the domain name <moroccanoil.com> on March 7, 2005;
- The adoption and registration by Complainant Moroccanoil of the business name “Moroccanoil” on October 3, 2006;
- The filing by Complainants of over ﬁfty trademark applications worldwide for trademarks comprised in whole or in part of the expression “Moroccanoil”, the earliest of which has been ﬁled on November 15, 2006 (Canadian trademark application No. 1,317,780, which later issued to registration);
- Extensive worldwide use of the trademark MOROCCANOIL by Complainants in association with hair care and hair styling products, which began in early 2007;
- Extensive worldwide advertising by Complainants of MOROCCANOIL hair care and hair styling products;
- The registration by Complainants of several trademarks comprised in whole or in part of the expression “Moroccanoil” (e.g. in the European Community: December 6, 2007; in the United States: August 5, 2008; in Australia: September 8, 2008; in Mexico: October 15, 2008; in Canada: February 13, 2009);
- The registration by Complainants of the domain names <moroccohairoil.com> and <morocoohairoil.org> on February 18, 2010 and February 17, 2010 respectively.
MOROCCANOIL is a coined expression created by Complainants and used by them since 2007 to distinguish their hair care products and Respondent cannot claim any rights or legitimate interests therein. Respondent is in no manner licensed or authorized by Complainants to use a similar trademark, or a trademark that resembles in any way, the MOROCCANOIL trademark, or any other trademark of Complainants. Respondent has no relation with either of Complainants. Morocco is not a country that has any particular reputation in hair care and/or hair styling products (as it does for instance with Clementine oranges and couscous). The only existing relationship between the word “Morocco” and hair care and hair styling products is the association created by Complainants by selling and advertising such products under the trademark MOROCCANOIL around the world since early 2007 in the manner explained above. There is therefore no legitimate reason explaining why anyone other than Complainants would subsequently register domain names including the word “Morocco” and “hair” for use in association with websites selling hair care and hair styling products, which Respondent has done as more fully explained under the next title. Finally, Respondent cannot justify making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers as he is clearly attempting to usurp Complainants’ goodwill and reputation in association with hair products, as more fully explained under the next title.
The disputed domain name was registered and is being used in bad faith. Respondent uses the disputed domain name as address for a website selling hair care and hair styling products. This clearly infringes Complainants’ trademark rights. In light of the fact that the trademark MOROCCANOIL corresponds to high quality products that are well-known around the world and have become an important fashion trend, it is obvious that Respondent has registered the disputed domain name to use it, and is actually using it, in such a manner as to attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainants’ MOROCCANOIL products.
On the website of Respondent, the purchasing consumer is offered for sale three different categories of products: oils, hair masques, and shampoos and conditioners. Under the “Oils” tab, Respondent offers two different sizes of its “Morocco Argan Oil”. The “Morocco Argan Oil” product is presented either in a 100 ml/3.4 oz or 30 ml/1 oz sizes. The bottle used by Respondent to sell its oil is made out of brown-colored glass, and presents a brown cap. Respondent’s bottle exactly mimics the appearance of Complainants’ best-selling product, the MOROCCANOIL oil treatment, which is sold in a brown glass bottle with a brown cap, and is offered in different sized bottles including 3.4 ﬂ. ounce, 6.9 fl. ounce, 100 ml, and 200 ml respectively. Under the “Masques” tab, Respondent offers two different types of hair masques: the “Morocco Argan Oil Caviar Essence Hair Masque” and the “Morocco Argan Oil Keratin Protein Hair Masque”. Both masques are presented in a 200 ml/7.0 fl. oz. size, and in a brown, circular plastic container. Again, the hair masques of Respondent are sold in a container that is very similar in the shape and color-theme to Complainants’ own MOROCCANOIL Hair Masks.
The third category of products consists of the shampoos and conditioners. The “Morocco Argan Oil Shampoo” and “Morocco Argan Oil Conditioner” are sold in brown colored plastic bottles with a brown pump. These also resemble the general outlook of some of Complainants’ own products, such as MOROCCANOIL Hydrating Cream. Such use clearly constitutes bad faith.
In its Response, Respondent contends the following:
Complainants own trademark rights in the trademark MOROCCANOIL for various types of hair products. Respondent is an individual affiliated with the U.S. distributor of certain hair products manufactured by Bingo Hair Cosmetic (“Bingo”), a hair product manufacturing company based in China. One of the lines of products manufactured by Bingo and distributed by Respondent’s affiliate is argan oil based hair product. Argan oil is a common ingredient in hair products and the oil is produced from the kernels of argan tree fruit (native to Morocco), and as such Moroccan oil is also known as argan oil.
Argan trees grow in only a few regions, the most prevalent of which is Morocco, and Bingo’s products, like those argan oil products of most other hair care product manufacturers, originate in Morocco. Annexed web pages to the Response reveal the numerous third party usages of the term “Morocco” in hair care products made from argan oil.
To consumers of argan oil based hair products, the geographic origin Morocco is well known and understood to indicate the presence of authentic argan oil derived from the argan tree fruit, not any single purveyor of such products. If a user of the Wiki queries “Moroccan Oil” he is redirected to the Wiki page for “Argan Oil”. Hence, Respondent registered the disputed domain name as a logical name for consumers of its argan oil based hair care products, who understand the origin of authentic argan oil to be Morocco.
The term “moroccohair” is different from “moroccanoil”, Complainants’ purported mark, in ways that are meaningful in respect of the confusingly similar standard applied to UDRP proceedings. First, “Moroccohair” contains merely the geographic term “Morocco” which is significant to the type of products being displayed at the website at issue, namely argan oil based products that originate from Morocco, and “Hair” because the products are indeed hair care products, as opposed to cosmetics, medicinal, or other types of products that may also originate from Morocco. MOROCCANOIL, by contrast, contains not the geographic proper noun “Morocco,” but rather the adjective “Moroccan,” used to describe people or things that emanate from Morocco, combined with the term “oil” which is the type of ingredient used in Complainants’ products (more specifically, argan oil), which does indeed emanate from Morocco, hence the descriptive term “Moroccan oil” or oil that emanates from Morocco.
Additionally, MOROCCANOIL is a weak trademark, entitled to very thin protection. As noted above the “oil” in Complainants’ goods emanates from “Morocco” and hence is “Moroccan Oil” based products. On the spectrum of distinctiveness, Complainants’ mark would fall under a descriptive classification, as is evident from the United States trademark registrations procured by Complainants which were either initially refused registration on the basis of the mark being merely descriptive, with such refusal only being overcome by Complainants’ filing of an affidavit under Section 2(f) of the Trademark Act to show that the mark has acquired a secondary meaning (a result that doesn’t take away from the fact that the mark itself is still a descriptive term), or a disclaimer of MOROCCANOIL was required because the term is descriptive. Here Respondent refers to USPTO office actions in two of Complainants’ registrations (also annexed as Exhibit F to the Response is the declaration of O. Tal made in support of Complainants’ Section 2(f) claim that the mark had acquired distinctiveness. In respect of the disputed domain name, the term “hair” that forms the suffix of the disputed domain name sounds nothing like, appears nothing like, and even connotes something different from the term “oil”. Thus, the differences in the mark as compared to the disputed domain name’s sight, sound, and meaning are significant when applied to a weak trademark such as Complainants’.
Respondent attaches to its Response a cancellation petition filed on January 13, 2012, by Y.P. Golan Trade Ltd. against Complainants seeking that the USPTO cancel several of Complainants’ U.S. registrations that include the term “Moroccanoil” as at least a part thereof on the basis of, among others, that the term “Moroccan Oil” is generic, or at best, merely descriptive of the goods without having acquired secondary meaning. Respondent incorporates by reference each of the USPTO petitioner’s contentions as to the reasons why the term Moroccan Oil is not protectable as a trademark.
Complainants have not provided any proof that a consumer would likely be confused into believing the term “Moroccohair” would be commonly thought of as being owned, sponsored, endorsed, or approved by Complainants. The only submission proffered by Complainants is a preliminary injunction it secured in a United States district court against use of the marks MOROCCAN GOLD and MOROCCAN MIRACLE OIL. Regardless of the merits of such injunction, the marks at issue there are indeed closer to Complainants’ mark than the disputed domain name here. The defendant’s marks in the court proceeding both used the adjective “Moroccan”, as opposed to the proper noun “Morocco”, and one also used the term “oil”, while the other used the term “gold” which is a term commonly associated with “oil” (i.e., oil is commonly referred to as “black gold”), thus having similar connotations.
Respondent is affiliated with the U.S. distributor of a hair care products manufacturer that makes a line of argan oil based products the oil for which emanate from the country of Morocco. Prior to ever hearing from Complainants, Respondent made substantial preparations to use and has been making bona fide use of the domain name by displaying its argan oil line of products on its web pages. As also noted above, consumers of argan oil based hair care products are well aware of the geographic origin of authentic argan oil, namely Morocco, and as such, use of the terms “Morocco” and “Hair” in the disputed domain name makes perfect, descriptive sense. Respondent did not choose the disputed domain name to affiliate itself or its products with Complainants, but rather selected a domain name that generically identifies the geographic origin of its “hair” products, namely, “Morocco.” It cannot be overemphasized that consumers of authentic argan oil based hair products, contrary to Complainants’ unsupported contentions and consistent with Respondent’s supported contentions, understand that the products originate in Morocco, and thus Morocco is not, as Complainants would have this Panel believe based on its demonstrably false and unsupported contentions, is a meaningless term in relation to argan oil based product. Thus, Respondent does have a legitimate interest in respect of the disputed domain name.
Much like the petitioner in the cancellation proceeding annexed to the Response, Respondent did not and does not believe Complainants have any rights in the terms “moroccan” and “oil” let alone the terms “Morocco” and “Hair”. As stated above, Respondent distributes among other things, a line of hair care products that include Argan oil (or Moroccan oil) as a principal ingredient. As such, it did not register the disputed domain name in bad faith, but rather believes it has a legitimate interest in the disputed domain name.
It should also be noted that virtually all but two of Complainants’ contentions on this prong of the UDRP relate solely to Complainants’ MOROCCANOIL trademark and do not speak to Respondent’s use of the <moroccohair.com> disputed domain name and his purported lack of rights or legitimate interests in the disputed domain name.
Contrary to Complainants’ contentions, Morocco is indeed a country with a particular reputation for argan oil and its use as a hair treatment. Complainants’ statement that “Respondent cannot justify making a legitimate noncommercial or fair use of the domain name in questions, etc.,” is without any support and has been fully repudiated hereinabove by Respondent.
Each of Complainants’ contentions with regard to bad faith is devoid of any support and relies wholly on innuendo through use of hyperbole. Respondent distributes a line of argan oil based hair products that emanate from Morocco. Nowhere do the products displayed on the website at the disputed domain name infer any association with Complainants and their products. The most distinctive feature of Complainants’ products are its light blue labeling with the predominant use of a vertically oriented wording MOROCCANOIL and a capital M (occasional use of a horizontally extending MOROCCANOIL with a capital M also appears, but on very few of Complainants’ products), none of which are utilized in the packaging of the products distributed by Respondent. To observe the disingenuousness of Complainants’ contentions in the present UDRP proceeding relative to Respondent’s product bearing resemblance to Complainants’ product simply because they are packaged in a brown bottle with a black cap, one need look no further than two complaints Complainants filed on October 5, 2012 in the United States District Court for the Southern District of New York and on October 9, 2012 in the United States District Court for New Jersey. Paragraphs 15 and 20 of the annexed complaints expressly state the distinctive significance of the turquoise blue labeling and orange colored M; none of these alleged distinctive features are present with the products displayed at Respondent’s website. The recent filing of the complaints annexed as Exhibits I and J to the Response are also significant for purposes of evidencing the lack of candor Complainants have shown to this Panel. While the UDRP is an offspring of rules promulgated by ICANN (ICANN being a body that is not governmental but rather a not for profit corporation) as compared to a United States District Court that is procedurally governed by a federal rules of civil procedure enacted by the United States Congress and backed by the force of law and which require that all representations made to the court be honest and accurate, the differences in the manner Complainants have described their distinctive features of its products in this UDRP Complaint as compared to the District Court complaint are remarkably different and in the case of this UDRP Complaint, completely misleading and self-serving. Assuming Complainants’ representations to the U.S. District Courts in the complaints annexed as Exhibit I and J are indeed honest and accurate, it reveals how loosely Complainants are playing with the veracity of their contentions made to this Panel. The Panel’s attention is also directed to paragraph 7 of O. Tal’s Declaration that is annexed as Exhibit F to the Response, wherein, under penalty of perjury, he states that the referenced packaging contains the “distinctive M on the distinctive blue background with the word “moroccanoil” written out[.]” emphasizing again the distinctiveness of Complainants’ packaging is not a brown bottle with a black top as is contended in the present Complaint, but rather the blue colored label and distinctive M logo.
Complainants’ unsustainable position is, in essence, that because they have achieved commercial success with their argan oil products that have been branded MOROCCANOIL, they should be given a monopoly over the use of the geographically accurate term “Morocco” in relation to hair care products having a primary ingredient originating in that country (as opposed to being synthetically formulated in a laboratory or being a less desired form of oil harvested elsewhere), and to domain names that point to web pages on which such hair care products are displayed. Such a result would deprive other purveyors of authentic argan oil products from using the geographic origin of the product in the promotion of their products, despite the geographic term being well known by hair product consumers to represent the geographic origin of argan oil based hair care products. As expressed above, Complainants’ illegitimate efforts to monopolize the term “Morocco” in this instance should not be fostered or encouraged, particularly in light of what amount to its numerous contentions that are demonstrably refuted in this response or are at odds with Complainants’ positions and representations made to United States District Courts and the United States Patent and Trademark Office in recently filed proceedings.
Much like the petitioner in the cancellation proceeding annexed as Exhibit G to the Response, Respondent did not and does not believe Complainants have any rights in the terms “Moroccan” and “Oil” let alone “Morocco” and “Hair.” Respondent distributes among other things, a line of hair care products that include argan oil (also commonly known as “Moroccan oil”). It did not register the disputed domain name in bad faith but did so for the legitimate purpose of promoting its line of hair care products that happen to have a primary ingredient that originates from Morocco.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
A. Identical or Confusingly Similar
Complainants have shown to the satisfaction of the Panel that they own several trademark registrations for MOROCCANOIL (or “moroccanoil”-related) in Canada, the United States, and various other countries.
In order to determine whether the first requirement of the Policy is met, the Panel has to compare Complainants’ MOROCCANOIL marks with the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. (“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, […] Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.[…].”)
A majority of the Panel notes that Complainants’ MOROCCANOIL trademark registrations are for the composite term “moroccanoil” (without the space between the composing elements “Moroccan” and “Oil”). Since registration of a trademark certainly allows for the inclusion of a space between terms, this means that any trademark rights of Complainants exist in the composite term and not in any of its components considered on their own.
Aside from the “.com” gTLD, the disputed domain name consists of the composite term (or phrase, considering that spaces are not allowed in a domain name registration), “Moroccohair”. While the visual and aural comparison between the disputed domain name and Complainants’ marks produces an impression of similarity due to the visual and aural closeness of the terms “Moroccan” and “Morocco”, comparing “oil” and “hair” visually, aurally or semantically certainly does not produce the same result. Thus, while the disputed domain name does bear some similarity to Complainants’ MOROCCANOIL marks, it is doubtful for the majority whether the element of confusing similarity required by Policy paragraph 4(a)(i) is met in the instant case.
In any case, the majority of the Panel need not reach a conclusion under the first element of the Policy, because Complainants have failed to make out their case under the second element. See Mastercard International Incorporated v. Education, Ersin Namli, WIPO Case No. D2011-2312 (“Ultimately, however, this Panel need not to decide the question of whether the Complaint establishes that Respondent’s disputed domain name is confusingly similar to marks of Complainant, since the Panel has determined that the Complaint fails on other grounds, as elaborated below.”).
B. Rights or Legitimate Interests
It has been shown that Respondent is using the disputed domain name in a website where it markets hair care products claimed to be made of argan oil. It is undisputed that argan oil is made from the kernels of the fruit of the argan tree, which exclusively (or at least typically) grows in the country of Morocco.
In the opinion of the majority, Respondent’s use of the disputed domain name is legitimate for the purposes of the Policy. “Morocco hair” being a composite term or a phrase designating hair somehow related to the country of Morocco, was not (and could not) be monopolized by the fact that Complainants’ own trademark rights in the composite term or phrase “Moroccanoil”. As seen above, Complainants’ trademark rights were granted for the composite term only, and not for any of its components considered in isolation.
The majority is aware that the products marketed by Respondent appear to be competing with Complainants’ MOROCCANOIL products. However there are no elements on the record showing that this competition is unfair, illegitimate or should otherwise lead to the conclusion that Respondent lacks rights or legitimate interests under Policy paragraph 4(a)(ii). The undisputed evidence consisting in printouts of Respondent’s website at the disputed domain name shows that Respondent’s hair care products are claimed to be made of argan oil from Morocco, and bear labels with the legend “Morocco Argan Oil” conveying such idea. Thus, Respondent’s website appears to be part of a legitimate effort to market hair products related to Morocco, rather than “merely a pretext designed to camouflage the registrant’s intent to exploit the trademark value of a domain name.” See Questar Gas Company v. Robert Linden, NAF Claim No. 1433714.
It is the view of the majority of the Panel that this circumstance alone suffices, for the limited purposes of the Policy, to establish a direct and plausible relationship between the marketing of these Morocco-related hair care products and the use of the disputed domain name by Respondent.
It is not the task of the Panel but of a court of competent jurisdiction to establish whether the products marketed by Respondent do in fact infringe or not on Complainants’ marks. See Photodex Corporation v. Clickguide.com and Michael Bannen, WIPO Case No. D2001-0952 (“In this regard, the Panel reminds the parties that the instant administrative proceeding is not equivalent to a trademark infringement suit. The Panel’s decision is not a determination of any kind on the issue of trademark infringement. Unlike the instant UDRP proceeding, the issue of trademark infringement is decided based, at least in part, on a comparison of the parties’ marks and the goods and/or services on or in connection with which the marks are used.”). See also AXA China Region Limited v. KANNET Limited, WIPO Case No. D2000-1377 (“It is beyond doubt, however, that the elements for “bad faith” or “legitimate interests” requirement under the Policy are not necessarily the same as the elements required for trademark infringement under a domestic law. This administrative proceeding and its consequent decision are not allowed to make a substantive decision on the legal issue of trademark infringement or unfair competition but only designed to solve a dispute concerning domain name registration in accordance with the Policy which is incorporated by reference into the Registration Agreement between the Respondent and the Registrar of the domain name at issue. See Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046.”).
For these reasons, the majority of the Panel is not satisfied that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Since Complainants failed to establish Respondent’s lack of rights and legitimate interests in the disputed domain name, the majority of the Panel need not deal with the bad faith element. See Bidmania Co. v. Dale Cumming / Euro PC, WIPO Case No. D2012-0632 (“Given the Panel’s findings in relation to the second element of paragraph 4(a) of the UDRP Policy, consideration of the third element is not necessary as the elements are conjunctive.”)
For the foregoing reasons, the Complaint is denied.
An opinion by Panelist Tony Willoughby, dissenting in part and concurring as to the ultimate result, follows.
David E. Sorkin
Dated: November 27, 2012
Opinion of Panelist Tony Willoughby, dissenting in part, but concurring as to the ultimate result
My colleagues find that “while the disputed domain name does bear some similarity to Complainants’ MOROCCANOIL marks, it is doubtful whether the element of confusing similarity required by Policy paragraph 4(a)(i) is met in the instant case.” I disagree.
Complainants’ trademark is MOROCCANOIL, which is registered for hair products. The disputed domain name is <moroccohair.com>.
I differ from the majority in that I would have found the disputed domain name confusingly similar to Complainants’ trademark. I would have come to that conclusion for a combination of the following reasons:
First, it is well-established that the test under paragraph 4(a)(i) of the Policy is a low-threshold test. Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.
Secondly, the names/marks to be assessed each comprise 4 syllables (“Moroccanoil” v. “moroccohair”), the first two of which are identical in each name and the third is similar.
Thirdly, the predominant element of each of the names/marks to be assessed is a reference to Morocco.
Fourthly, paragraph 1.2 of the WIPO Overview 2.0, which has been quoted in part by the majority also includes a passage reading “Some panels have additionally required that, for a domain name to be regarded as confusingly similar to the complainant’s trademark, there must be a risk that Internet users may actually believe there to be a real connection between the domain name and the complainant and/or its goods and services. Such panels would typically assess this risk having regard to such factors as the overall impression created by the domain name, the distinguishing value (if any) of any terms, letters or numbers in the domain name additional to the relied-upon mark” [Emphasis added].
I count myself in that group of panels. Not only are the first three syllables of each of the names almost identical and not only are they a reference to Morocco (“Moroccan” and “Morocco”) the additional letters in the disputed domain name create the word “hair”, a clear reference to Complainants’ product area.
UDRP panels commonly take account of the overall impression created by additional material in the disputed domain name in assessing confusing similarity (LEGO Juris A/S v. DBA David Inc/ DomainsByProxy.com, WIPO Case No. D2011-1290, “Therefore, the mere addition of the words “Ninjago” and “Kai” is not sufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademark. Indeed, the selection of these two words, which refer, respectively, to the Complainant’s product line released in 2011 and to one of its characters, is particularly apt to increase the likelihood of confusion with the Complainant and its toys.”; Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, WIPO Case No. D2004-0279, “As a matter of fact, considering that Complainant is also famous for its ratings of restaurants, the addition of generic terms such as restaurant and recipes to the trademarks MICHELIN and LE GUIDE ROUGE, strengthens the idea of an existing connection between Complainant and the domain names.”; ACCOR v. J Lee, WIPO Case No. D2005-0137, “A domain name which incorporates the Complainant’s mark with the adjunction of a generic word can be deemed to be confusingly similar to the mark. Confusion is only heightened when the generic word added by the Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark.”; The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137, “The distinctive part of the Domain Name is the word “RITZ” – the hyphen, the “.com”, and the word “hotel”, are all either generic or descriptive. Indeed, the addition of the word “hotel” tends, if anything, to increase the likelihood of confusion, because the word is descriptive of the business operated by the Complainant under the RITZ mark”).
An interesting (and very recent) decision is Scout24 Holding GmbH., Scout24 International Management AG v. Nexmedia GmbH, WIPO Case No. D2012-1359 where the trade mark was SCOUT24 and the disputed domain names were <hurenscout.com> and <seitensprungscout.com>:
“One must therefore determine whether they are confusingly similar. The only part of the disputed domain names which is identical is the word “scout”. The word “scout” as shown by the various definitions contained in common dictionaries, is essentially descriptive. The question is whether this essentially generic and descriptive word has acquired, in the present circumstances, a distinctive force, by itself. The Panel finds that today the word “scout” is widely used in the Internet to signify specific search activities. It is however just as often used by trademark owners other than the Complainants, and the word, by itself, is not perceived as more than pointing to specific search activities. It is the Panel’s view that to become distinctive, the word must be combined with a pre- or a suffix enabling the combination to acquire distinctive force as a name. This distinctive effect could be also achieved by other circumstances, such as the identity or similarity of products and services or through a combination of word and image.”
In the case in hand, Complainants have achieved distinctiveness for their mark by the addition of the word “oil” to “Moroccan” (all one word) and by what is by any standards substantial use over the last 5 years. Respondent has added distinctiveness to the name “Morocco” by the addition of the word “hair”. “Moroccohair” is not an ordinary word combination. It is meaningless. It is not a recognizable descriptive term and for this Panelist it flags up Complainants’ well-known brand.
As to rights and legitimate interests, much of Respondent’s case is based on the element common to both parties’ products, which is argan oil, also known as “Moroccan oil”. Respondent argues that if Complainants were to succeed, it would give Complainants a monopoly in the description “Moroccan oil”. The fact is, however, that Respondent’s brand is “Morocco” and the disputed domain name is a brand usage, not a descriptive use. This case has nothing to do with the description “Moroccan oil”, save for the fact that that description is very similar to Complainants’ trademark. What were Respondent’s intentions when selecting “Morocco” as a brand name for a range of hair products competing with that of Complainants’ range of hair products and selecting “moroccohair” for a domain name?
I have grave difficulty in finding that a new-comer to an industry area can select a name which is confusingly similar to a prominent brand in the same industry area and can successfully maintain that name on the basis of a descriptive term (“Moroccan Oil”), which is not the term he is using, but which is the subject of a currently valid and subsisting trademark of Complainants. However, I recognize that this is an area in which there is scope for intelligent minds to diverge. In particular, while Respondent’s behaviour smacks very strongly to this Panelist of being a deliberate and opportunistic attempt to take a free ride on the back of the fame of Complainants’ brand, this Panelist accepts that this is not a typical case of cybersquatting and is a matter best left to the courts. Had this Panelist been a sole panelist and not had the benefit of the views of his distinguished colleagues, he might have come to a different conclusion.
Dated: November 27, 2012