Moroccanoil, Inc., Moroccanoil Israel Ltd, and 3903150 Canada Inc., d/b/a Moroccanoil v. Mac Davis
Claim Number: FA1206001450981
Complainants are Moroccanoil, Inc., Moroccanoil Israel Ltd, and 3903150 Canada Inc., d/b/a Moroccanoil (“Complainant”), represented by Kevin R. Keegan of CONKLE, KREMER & ENGEL, California, USA. Respondent is Mac Davis (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <moroccanoilmd.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on June 27, 2012; the National Arbitration Forum received payment on July 2, 2012.
On July 2, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <moroccanoilmd.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 2012 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@moroccanoilmd.com. Also on July 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 16, 2012, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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.
Complainants request that the domain name be transferred from Respondent to Complainant, Moroccanoil, Inc.
A. Complainants’ Contentions
Complainants own trademark rights in the MOROCCANOIL mark via registration with government agencies worldwide, including with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,478,807 registered August 5, 2008), the Mexican Institute of Industrial Property (“MIIP”) (Reg. No. 1,066,512 registered October 15, 2008), and the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA734460 registered September 24, 2008). Complainants have offered high quality hair products under the MOROCCANOIL mark since 2007 and have used their <moroccanoil.com> domain name since 2005 to provide consumers with information regarding its hair products. Complainants’ products have been featured in fashion magazines and public interest publications and have benefitted from substantial media and consumer exposure.
Respondent registered the <moroccanoilmd.com> domain name in an attempt to “steal” customers from Complainants by hosting a website that sells competing products. The disputed domain name is confusingly similar to Complainants’ MOROCCANOIL mark. Respondent has not demonstrated any preparation to use the <moroccanoilmd.com> domain name in connection with a bona fide offering of goods or services and its sale of competing hair products is not a legitimate noncommercial or fair use of the domain name. Respondent is not commonly known by the disputed domain name. Respondent disrupts Complainants’ business by selling competing products, and attracts Internet traffic to its site in order to make sales and make a profit. Respondent had actual and constructive knowledge of Complainants’ MOROCCANOIL mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that Respondent registered the <moroccanoilmd.com> domain name on February 17, 2012.
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."
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.
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.”).
In the instant proceedings, there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” It is acceptable to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208584 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
In this case, Moroccanoil, Inc., Moroccanoil Israel Ltd, and 3903150 Canada Inc., d/b/a Moroccanoil, which hold rights in trademarks reflected in the disputed domain name, are all related companies with the sole shareholder of each being Mr. Ofer Tal, who directs and controls all three businesses. Therefore, the Panel finds that there is a sufficient nexus or link between the Complainants and it will treat them as a single entity in this proceeding.
Complainant claims it owns trademark rights in its MOROCCANOIL mark, including through its registrations with the USPTO (Reg. No. 3,478,807 registered August 5, 2008), MIIP (Reg. No. 1,066,512 registered October 15, 2008), and the CIPO (Reg. No. TMA734460 registered September 24, 2008). Complainant’s multiple trademark registrations serve to establish Complainant’s rights in its MOROCCANOIL mark pursuant to Policy ¶ 4(a)(i). See Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010).
Complainant alleges that the <moroccanoilmd.com> domain name is confusingly similar to its MOROCCANOIL mark. Complainant also contends that the disputed domain name adds the term “MD,” whose meaning is unclear in the context of the domain name. The Panel notes that the initials of Respondent Mac Davis is “MD”. Regardless, the Panel finds that the trivial addition of the letters “MD” does not prevent confusingly similarity to Complainant’s mark under Policy ¶ 4(a)(i).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent is not commonly known by the <moroccanoilmd.com> domain name. Complainant claims that as the owner of the MOROCCANOIL mark, it has not licensed Respondent to use the mark or to apply for a domain name using the mark. The Panel notes that the registrant of the disputed domain name is identified in the WHOIS information “Mac Davis” . The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), stated that the respondent was not commonly known by the disputed domain name because the WHOIS information, as well as other information on the record, did not demonstrate that the respondent was commonly known by the disputed domain name. The Panel concludes that Respondent’s lack of permission to use the mark, paired with the conflicting WHOIS information, demonstrates that Respondent is not commonly known by the <moroccanoilmd.com> domain name.
Complainant submits evidence showing that Respondent uses the resolving website to offer customers competing products, and argues that the products are not associated with Complainant’s business. The Panel finds that Respondent’s offering of competing goods at its resolving website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s registration of a domain name that uses Complainant’s trademarked MOROCCANOIL name, as well as the sale of competing hair care products, is evidence that Respondent was actually aware of Complainant’s trademarks and products. The Panel concludes that Respondent’s use of the <moroccanoilmd.com> domain name to offer competing products to those sold by Complainant demonstrates Respondent’s bad faith registration pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent disrupts its business by misdirecting customers in order to bring traffic to its site and make sales on its products. Complainant contends that Respondent’s bad faith is demonstrated by its sale of hair care products in direct competition with Complainant. In Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006), the Panel held that the respondent’s registration and use of the disputed domain name was in bad faith because the respondent redirected Internet users to the respondent’s competing website. This Panel determines that Respondent’s competing use of the <moroccanoilmd.com> domain name by offering products in competition with Complainant is a disruption to Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant further alleges, and this Panel accepts, that Respondent makes a commercial gain by attracting Complainant’s potential consumers to Respondent’s website as a result of consumer confusion between the disputed domain name and the MOROCCANOIL mark. The Panel concludes that Respondent’s intentional attraction of Internet traffic to its website to sell competing goods by creating a likelihood of confusion with Complainant’s mark demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moroccanoilmd.com> domain name be TRANSFERRED from Respondent to Complainant, Moroccanoil, Inc..
David A. Einhorn, Panelist
Dated: August 20, 2012
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