WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Moroccanoil Israel Limited v. Newman
Case No. DNL2012-0051
1. The Parties
Complainant is Moroccanoil Israel Limited of Rishon LeZion, Israel, represented by Ploum Lodder Princen, the Netherlands.
Respondent is Newman of Casablanca, Morocco.
2. The Domain Name and Registrar
The disputed domain name <moroccanoil.nl> (the “Domain Name”) is registered with SIDN through Mijn InternetOplossing.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2012. On August 14, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On August 15, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 17, 2012. In accordance with the Regulations, article 7.1, the due date for Response was September 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 7, 2012.
The Center appointed Remco M.R. van Leeuwen as the panelist in this matter on September 25, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant is involved in the manufacturing, distribution and selling of innovative high-quality hair products. Complainant’s products are sold throughout North-America, Europe and other parts of the world.
Complainant is the owner of the following trademarks (hereinafter: the “Trademarks”):
- Community trademark MOROCCANOIL, registered on September 18, 2008, under number 006492185 in class 3.
- Community trademark MOROCCANOIL (device), registered on August 24, 2010, under number 009015496 in class 3.
- Community trademark MOROCCANOIL (device), registered on April 28, 2010, under number 008729519 in class 3.
The first date of the registration of the Domain Name is June 26, 2009. The date of registration of the Domain Name by Respondent is January 17, 2011. According to Complainant, the Domain Name is linked to a log-in page offering no further information about Respondent or otherwise.
5. Parties’ Contentions
A trademark or trade name protected under Dutch law
Complainant remarks that the Domain Name is identical to the Trademarks. The addition of the country code top-level domain “.nl” is irrelevant.
Respondent has no rights to or legitimate interests in the Domain Name
Complainant has not found that Respondent has any registered trademarks or trade names corresponding to the Domain Name. Moreover, according to Complainant no license or authorization has been given by Complainant to Respondent.
The website connected to the Domain Name is only connected to a log-in page. On the website it is stated “Welkom bij Horde”. Therefore, according to Complainant, it is also obvious that Respondent is not making a legitimate noncommercial use of the Domain Name.
The Domain Name has been registered or is being used in bad faith
According to Complainant, the fact that the Domain Name is currently being used as a log-in portal for “Horde” shows that Respondent intends to prevent Complainant from using the Domain Name and also shows it was done for the purpose of disrupting Complainant’s activities.
Moreover, Complainant claims that its Trademarks are well-known and that there is no doubt that Respondent was aware of the value of the Trademarks at the time of registering the Domain Name.
Complainant remarks that Respondent has not responded to the demand letter sent by Complainant, which further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In accordance with article 10.3 of the Regulations, since no Response has been filed by Respondent, the Panel will have to decide based on the Complaint. Based on this article, the Panel will have to grant the Complaint unless it appears unlawful or without merit. Therefore, the Panel will review the Complaint on this basis.
A. Identical or Confusingly Similar
Complainant has provided evidence that it is the owner of three Community trademarks for MOROCCANOIL. The relevant part of the Domain Name is identical to this trademark.
The Panel therefore rules that, based on Complainant’s rights in the Trademarks, Complainant has met the first ground of the Regulations as set out in article 2.1(a) under I.
B. Rights or Legitimate Interests
Complainant states that Respondent has no rights to or legitimate interests in the Domain Name. As far as Complainant is aware, Respondent is not entitled to any trademark registration for the term “moroccanoil”, nor has Complainant granted permission to use the Trademarks. Moreover, according to Complainant, the Domain Name is linked to a log-in webpage (requiring the completion of a username and password) merely mentioning the company or name “Horde” without mention of the term “moroccanoil”. The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name.
Taking into account that Respondent did not file a Response, the Panel is not aware of any rights or legitimate interests that Respondent may have in the Domain Name and will have to presume it has none.
The Panel therefore rules that Complainant has met the second ground of the Regulations as set out in article 2.1(b).
C. Registered or Used in Bad Faith
On the basis of the record, the Panel could not establish that Complainant’s Trademarks are well known. However this may be, the Panel notes that the Trademarks, which are effective and enforceable in the Netherlands, predate the registration of the Domain Name by Respondent. On the balance of probabilities, the Panel finds it more likely than not that, as Complainant claims, Respondent was aware of Complainant’s Trademarks at the time of registration. Even in the absence of any such positive awareness, in the circumstances of this case it would have been incumbent on Respondent to examine the rights position in relation to the Domain Name (see Stichting VVV Groep Nederland v. Balata.com Ltd., WIPO Case No. DNL2012-0042). These findings, together with the finding that Respondent has no rights or legitimate interests in the Domain Name and has provided no evidence whatsoever of any actual or contemplated good-faith use by it of the Domain Name, lead the Panel to conclude that the Domain Name has been registered by Respondent in bad faith. The Panel agrees with Complainant that the lack of response by Respondent to both the warning letter sent by Complainant and to this Complaint, further supports this conclusion.
The Panel therefore finds that Complainant has met the third ground of the Regulations as set out in article 2.1(c).
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <moroccanoil.nl> be transferred to Complainant.
Remco M.R. van Leeuwen
Dated: October 9, 2012