1.1 The Complainant is BSB Pacific Pty Ltd. of Thomastown, VIC, Australia, represented by Axis Legal (Australia) Pty Limited, Australia.
1.2 The Respondent is James Oewm/ SEOable Domains of Plano, Texas, United States of America, of United States of America.
2.1 The disputed domain name <moroccantan.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2015. On January 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details.
3.2 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”).
3.3 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 January 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2015.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on March 3, 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.
3.5 On March 5, 2015, the Panel issued Administrative Procedural Panel Order No. 1, seeking confirmation of an aspect of the Complainant’s complaint and asking the Respondent whether it wished to file a further submission in this respect. The Complainant provided such confirmation on March 6, 2015. The Respondent did not respond to this invitation.
4.1 The Complainant is a company incorporated under the laws of Australia. It is engaged in the manufacture, sale, distribution and promotion of a range of tanning products. Since 2008, BSB Pacific has supplied its products to numerous beauty salons, tanning salons, mobile tanning technicians, beauticians and consumers in various countries.
4.2 In 2011, the Complainant launched the MOROCCAN TAN brand in Australia and New Zealand to provide spray tan solutions based on argan oil, as well as tanning equipment, tanning accessories and disposables. Since then, it has provided the MOROCCAN TAN products to distributors, beauty salons and general consumers across the United States, Canada, the United Kingdom of Great Britain and Northern Ireland, Finland, Sweden, Romania, Australia and New Zealand.
4.3 The Complainant and its subsidiaries are the owners of various trade marks around the world that comprise or incorporate the words “Moroccan Tan”. They include the following registered trade marks in class 3:
(i) Australian Registered Trade Mark No. 1495788 dated June 12, 2012, for the word mark MOROCCAN TAN, in the name of the Complainant;
(ii) UK Registered Trade Mark No. 3007751 dated May 29, 2013, in the name of “BSB Global”, which takes the following form:
and
(iii) Community Trade Mark No. 012661856 dated March 5, 2014, in the names of “BSB Global” and “BSB Global Pty Limited”, which takes the same form as the UK registered trade mark identified above.
4.4 The Complainant has promoted products under the MOROCCAN TAN mark from websites using the <moroccantan.com.au> and <moroccantan.co.uk> domain names since 2012. The Complainant has also promoted its products on Facebook and other social media sites since at least June 2012.
4.5 The Domain Name was registered on March 24, 2011. In or about May, 2013, the Domain Name was transferred into the name of the Respondent. The Respondent is recorded as the registrant of over 1,300 domain names. It would appear both from this fact and possible the name of the Respondent, that the Respondent is a domain name trader.
4.6 The Respondent was also the respondent in Eastman Kodak Company v. James OEWM, NAF Claim No. 1530545. The domain name in that case was <kodakmoments.com> and was being used to resolve to a GoDaddy parking page. In a decision dated January 1, 2014, the Respondent was held to have registered and used that domain name in bad faith.
4.7 The Domain Name in the present case has similarly been used to resolve to a GoDaddy parking page. As at January 23, 2015 that page displayed various sponsored links a number of which would appear to be connected with spray tanning, but many of which were not. The webpage also contained the statements:
“Is this your domain?
Let’s turn it into a website”
and
“Would you like to buy this domain?”
4.8 A similar GoDaddy page continues to be displayed as at the date of this decision.
5.1 The Complainant refers to its registered trade mark rights and claims that it has developed an extensive reputation and common law trade mark rights in the term “Moroccan Tan” dating back to at least early 2011. Given this it contends that the Domain Name is identical to its registered domain name.
5.2 It further contends that the use of the Domain Name in this case involves the use of its trade mark in connection with a webpage that merely lists links to third party websites and that this does not involve a bona fide offering of services and is not a legitimate noncommercial or fair use of a domain name. As such it contends that the Respondent has no rights or legitimate interests in the Domain Name
5.3 The Complainant further asserts as follows:
“Considering the global and longstanding global reputation of BSB Pacific in the tanning industry and its reputable products sold under its Trade Marks MOROCCAN TAN and MOROCCANTAN Logo, we believe that the Respondent was aware of BSB Pacific and its Trade Mark before he registered the Domain Name.”
5.4 It also contends that given the use that has been made of the Domain Name, the Respondent other registrations and the offer for sale of the Domain Name, the Domain Name has both been registered and used in bad faith.
5.5. In various places the Complainant refers to the Respondent’s “acquisition” of the Domain Name in bad faith. In response to the Administrative Panel Procedural Order No. 1, dated March 5, 2015, the Complainant confirmed that it contended that this acquisition took place in or about May 2013, relying upon historic WhoIs records that suggested that the Domain Name had been previously registered in the name of one “Larry Hock”.
5.6 The Respondent did not reply to the Complainant’s contentions.
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel accepts that the Domain Name can only be sensibly read as the term “morrocan tan” combined with the “.com” top level domain. Given that the Complainant has shown that it is the proprietor of at least one word mark for that term, the Panel finds that the Domain Name is at least confusingly similar to a trade mark in which the Complainant has rights. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
6.5 The registration of a domain name for use in connection with a page that displays pay-per-click links does not provide rights or legitimate interests if that use is intended to capitalise on the reputation and goodwill of a third party’s trade mark (as opposed to descriptive or generic terms in the domain name). In this respect, see paragraph 2.6 of the WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Indeed, such activity will usually constitute positive evidence of a lack of rights or legitimate interests (see, for example, this Panel’s decision in Premier Farnell Corp. v. BlueHost.com, Bluehost Inc / Newark del Peru S.A., WIPO Case No. D2010-2111).
6.6 For the reasons that are set out under the heading “Registered and Used in Bad Faith” below, the Panel finds that the Domain Name has been registered with either this use in mind or some other use that would take unfair advantage of the reputation of the Complainant’s marks. In the circumstances, the Complainant has sufficiently shown that the Respondent has no rights or legitimate interests in the Domain Name and made out the requirements of paragraph 4(a)(ii) of the Policy.
6.7 The Domain Name appears to have been initially registered in March 2011. Were this to be the date of registration for the purposes of assessing whether registration in this case was in bad faith, then the Complainant would be in difficulty. The Complainant admits that it did not start using that term in relation to its products before some unspecified date in 2011. Although it contends it had built up such a reputation in that term by “early 2011” that it had common law rights in that term, this is not much more than an assertion. No further evidence is provided that is said to support that contention or from which it is possible to conclude that it is more likely than not that, as at March 2011, the Domain Name was registered with the Complainant’s use of that term in mind.
6.8 Admittedly, the fact that the Domain Name seems to have been registered at about the same time as the Complainant adopted the term “Moroccan Tan” for its products is curious. Sometimes an inference can be drawn from the fact that a particular domain name has been registered just after products have been launched under a similar name. Further, although the words “Moroccan” and “Tan” are each ordinary English words, they are not words that (at least so far as this Panel is aware) are frequently used in combination in some descriptive sense. However, the problem is that this is mere speculation on the part of the Panel as none of this is asserted or alleged, let alone evidenced, in the Complaint.
6.9 Nevertheless, ultimately that does not matter. The reason is that the Complainant also has confirmed that it contends and relies upon the fact that the Domain Name was transferred into the name of the Respondent in or about May 2013. Such a transfer can be treated as a fresh registration for the purposes of the Policy (see paragraph 3.7 of the WIPO Overview 2.0 and the discussion of the Panel in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO Case No. D2009-0785).
6.10 Although the evidence of reputation of that term prior to that date is sparse, there is some material that supports the contention that at least by May 2013 the term had been used to such a degree that it might have become (as is alleged) well known for its association with the Complainant’s products. Even though it is not clear when in 2011 the Complainant started using that term, by May 2013 it seems reasonable clear that there had been approximately 2 years of use. There is also the Complainant’s undisputed statement that the products were being promoted from websites operating from the <moroccantan.com.au> and <moroccantan.co.uk> domain names from 2012 and there is actual evidence of the promotion of such products on Facebook from June 2012 onwards.
6.11 Further, there is the earlier decision of Eastman Kodak Company v. James OEWM, supra involving the Respondent. The domain name in that case was <kodakmoments.com>. It would appear that the domain name in that case had been used in a similar if not identical manner in which the Domain Name has been used in this case. Further, <kodakmoments.com> had clearly and obviously been registered with the complainant’s mark in mind. It is questionable whether a single registration of this sort constitutes a “pattern” of conduct for the purposes of paragraph 4(b)(ii) of the Policy, but whether or not this is so, this is what a court might describe as “similar fact evidence”. It shows that the Respondent has in at least one occasion in the past been prepared to register a domain name that takes unfair advantage of the trade mark rights of some one else. As such, it is something that the Panel can and does take into account when assessing the Respondent’s likely motivations when it acquired the Domain Name.
6.12 Accordingly, when considered in the round the Panel concludes that there is at the very least a prima facie case that the Domain Name was acquired in May 2013 and then held with a view to taking some unfair advantage of the trade mark rights of the Complainant. The Respondent has not sought to argue or bring forward any evidence to the contrary. Therefore, the Panel finds on the limited material before it that on balance of probabilities the Domain Name was registered and held with such an unfair use in mind. That may have been for use in connection with sponsored links (which falls within the scope of paragraph 4(b)(iv) of the Policy), or it might have been for sale (which falls with the scope of paragraph 4(b)(i) of the Policy). However, whatever the exact use that was intended, it was one that would unfairly profit from or exploit the trade mark rights of the Complainant. That is sufficient for a finding of bad faith registration and use (see Match.com, LP v Bill Zag and NWLAWS.ORG WIPO Case No. D2004-0230). Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <moroccantan.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Date: March 16, 2015