WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Totally Hair Direct Pty Ltd v. Knowledge House / Whois Agent, Whois Privacy Protection Service, Inc.
Case No. D2015-0900
1. The Parties
The Complainant is Totally Hair Direct Pty Ltd of Redcliffe, North Queensland, Australia, represented by Burns IP & Commercial, Australia.
The Respondent is Knowledge House of Gilbert, Arizona, United States of America / Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States.
2. The Domain Name and Registrar
The disputed domain name <silkofmorocco.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2015. On May 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 28, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 2, 2015. On June 9, 2015, the Complainant sent an email clarifying the Mutual Jurisdiction.
The Center verified that the Complaint together with the amendment to 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 June 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2015.
The Center appointed Jon Lang as the sole panelist in this matter on July 20, 2015. 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.
4. Factual Background
The Complainant owns trademark registrations for SILK OIL OF MOROCCO and SILK (hereafter the ‘Marks’) in a number of jurisdictions, for instance, Australia (e.g., SILK OIL OF MOROCCO word mark, registration number 1516470 filed on September, 26, 2012 and registered on January 18, 2013) and Hong Kong (SILK OIL OF MOROCCO logo mark, registration number 302213090 filed on April 5, 2012 and registered on April 5, 2012).
The Complainant first started selling SILK OIL OF MOROCCO products in June 2010 in Australia. Today, its products are sold throughout the world, including Japan, the United States of America and United Kingdom of Great Britain and Northern Ireland. Initially, SILK OIL OF MOROCCO was used for argan oil-based hair products. However, the Complainant has expanded its offering to include body care products and cosmetics. The Complainant’s products are sold though a variety of outlets and promoted via the Complainant’s general and country-specific websites at: “www.oilofmorocco.com”, “www.silkoilofmorocco.co.uk”, “www.silkoilofmorocco.com”, “www.silkoilofmorocco.com.au”, “www.silkoilofmorocco.ca”, “www.silkoilofmorocco.eu” and “www.silkoilofmorocco.us” and through social media. The Complainant regularly undertakes advertising campaigns, and sales of SILK OIL OF MOROCCO branded products exceed AUD 4.5 million per year.
The Respondent registered the disputed domain name <silkofmorocco.com> (hereafter the “Domain Name”) on December 10, 2014.
5. Parties’ Contentions
A.1 Identical or Confusingly Similarity to Complainant’s Marks
The Complainant enjoys considerable goodwill in its Marks which have become known in Australia, the United States, Canada and Europe.
The Domain Name is confusingly similar to the Marks.
The Domain Name consists of the words “silk”, “of” and “morocco” which thus (ignoring the generic Top-Level Domain “gTLD” suffix) only differs from the Complainant’s SILK OIL OF MOROCCO mark by one word, namely “oil”. The word “oi” is a weak element of the SILK OIL OF MOROCCO mark because it refers to the key ingredient of the Complainant’s products (argan oil). It also appears in the middle of the mark and thus It would be easy for consumers to disregard, not notice or mistakenly forget to type the word “oil” when searching on the Internet for the Complainant’s products.
The absence of the word “oil” in the Domain Name does not serve to distinguish it from the Complainant’s Marks and many consumers have been confused by the Domain Name. This has resulted in the Complainant receiving numerous emails from consumers who have dealt with the Respondent’s website (described in more detail below).
A.2 No Rights or Legitimate Interests in the Domain Name
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not licensed or otherwise permitted the use its Marks and the Complainant does not believe that the Respondent has been commonly known by the Domain Name. Moreover, so far as the Complainant is aware based on its investigations (described fully in its Complaint), the Respondent has taken no steps to register the Domain Name as a trademark or business name.
Furthermore, so far as the Complainant is aware, there is no evidence that the Respondent has used the Domain Name in connection with a bona fide offering of goods or that it is making a legitimate noncommercial or fair use of the Domain Name.
The Respondent is using the Domain Name for the purposes of commercial gain (namely, to sell a hair care product under the brand name SILK that purports to be or contain argan oil) by misleadingly diverting consumers from the Complainant to its own website. Given the use to which the Domain Name has been put, it can reasonably be inferred that the Respondent knew of the Complainant’s Marks.
A.3 Bad faith
The Domain Name was registered and is being used in bad faith.
The Respondent registered the Domain Name primarily for the purpose of disrupting the business of the Complainant.
The Respondent sells a competing hair product using a confusingly similar domain name with the deliberate intention of diverting customers seeking the Complainant’s products to its own website. By such use, the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of products on its website.
As already mentioned, the Complainant has received numerous emails from consumers which demonstrate that they have been confused into believing that the website of the Respondent is that of, or associated with the Complainant. Such emails evidence complaints about unauthorized billing by the Respondent’s website and requests to cancel subscriptions to the Respondent’s product. The Respondent’s conduct thus causes irreparable damage to the Complainant’s goodwill and reputation in its Marks.
It can be inferred that the Respondent knew of the Complainant’s Marks at the time of registration of the Domain Name and that the Respondent both registered and used the Domain Name in bad faith for the purposes of trading off of the goodwill and reputation of the Complainant’s Marks in order to deceive consumers that its website is that of, or associated with, the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the Marks for the purposes of the Policy.
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name comprises a substantial part of the word elements of the Complainant’s SILK OIL OF MOROCCO mark, (simply omitting the word “oil”). As the SILK OIL OF MOROCCO mark and the Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine the likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name. In this case, the issue is not about added material but omitted material, namely the word “oil”. The issue is therefore whether such omission is significant enough to render the Domain Name something other than confusingly similar to the Complainant’s SILK OIL OF MOROCCO mark (the Domain Name and mark clearly not being identical). The panel agrees with the thrust of the Complainant’s case, that the word “oil” is not so significant a part of the SILK OIL OF MOROCCO mark as to avoid a finding of confusingly similarity. The Domain Name and SILK OIL OF MOROCCO mark are confusingly similar at a visual or aural level.
Moreover, actual confusion has already taken place as evidenced by the emails the Complainant has received as described earlier.
The Panel finds that the Domain Name is confusingly similar to the SILK OIL OF MOROCCO mark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established. In such circumstances, it is not necessary to consider the Complainant’s SILK mark.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Before doing so however, the Panel will consider whether such a finding would in any way be inappropriate.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the Domain Name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark in issue.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolves, e.g., a commercial site selling competing products, the Panel would not accept that there is a legitimate non-commercial or fair use. In any event, any noncommercial or fair use must be without intent to mislead, but it is likely in fact (in the absence of any alternative explanation), that the very purpose of the Respondent choosing the Domain Name was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that the Respondent’s website, to which a domain name which is confusingly similar to the Complainant’s SILK OIL OF MOROCCO mark resolves, could be a bona fide offering when it sells competing products.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent certainly hasn’t provided any. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above.
Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Given that these are the circumstances in the present case, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
The Policy sets out other grounds upon which a finding of bad faith registration and use may be founded, e.g., where it can be shown that a respondent has registered a domain name primarily for the purpose of disrupting the business of a competitor. However, given the finding set out above, it is unnecessary to go on to consider other possible grounds.
In all the above circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <silkofmorocco.com> be transferred to the Complainant.
Date: July 29, 2015