WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockwool International A/S v. kaka toys
Case No. D2008-0015
1. The Parties
Complainant is Rockwool International A/S, Hedehusene, Denmark, represented by Zacco Denmark A/S, Denmark.
The WhoIs information lists the names of two entities – Registrant Name and Registrant Organization. The Registrar, HiChina Web Solutions Limited, has confirmed on January 18, 2008, that the registrant of the disputed domain name is the Registrant Organization ¡°kaka toys¡±. Accordingly, the Panel finds that Respondent in the present proceeding is kaka toys, dongguan, China.
2. The Domain Name and Registrar
The disputed domain name <china-ocean-rockwool.com> is registered with HiChina Web Solutions Limited.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ¡°Center¡±) on January 4, 2008. On January 4, 2008, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On January 7, 2008, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 21, 2008. 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¡±), 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 (with the Center¡¯s covering documents being in both English and Chinese), and the proceedings commenced on January 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 11, 2008. Respondent did not submit any formal response. However, on January 22, 2008, the Center received an email response (in Chinese) from one ¡°å«ÑóVicky¡±.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 22, 2008. 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
Complainant is Rockwool International A/S, a company which was founded in 1909. It has a turnover of DKK 11.5 billion and employs over 8,000 employees. Complainant operates 22 factories in 14 countries in Europe, North America and Asia and has a world-wide network of sales offices, distributors and partners. Complainant is the owner of the trade mark ROCKWOOL which is used and registered in relation to Complainant¡¯s stone wool/mineral wool insulation products. The trade mark ROCKWOOL is registered by Complainant in most countries for building materials of stone wool/mineral wool in class 19 and insulation materials of stone wool/mineral wool in class 17. Complainant has trade mark registrations of its ROCKWOOL mark in Denmark, France, Italy and in more than 50 other national registrations around the world.
The disputed domain name was registered on August 26, 2007.
5. Parties¡¯ Contentions
Identical or Confusingly Similar
Complainant contends that the disputed domain name is identical or confusingly similar to a trade mark in which Complainant has rights.
Complainant asserts that it has rights in the ROCKWOOL mark and adduces supporting documents to prove the existence and validity of its registered trade mark rights in the mark. The disputed domain name includes the entire trade mark of Complainant, ROCKWOOL, with the simple addition of the elements ¡°china¡± and ¡°ocean¡±. Complainant argues that the added elements have no distinctiveness and they merely indicate the geographical location of Respondent. Thus, the adding of the elements ¡°china¡± and ¡°ocean¡± does not take the domain name out of the scope of protection of Complainant¡¯s registered trade mark rights. In fact, Complainant argues that the adding of the elements only increases the risk of confusion as there is a significant risk that the customers of Complainant would be mislead into believing that the disputed domain name belongs to and is used by Complainant or Complainant¡¯s subsidiary, or that the domain name has been registered with the prior consent of Complainant.
Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name. Complainant asserts that its ROCKWOOL trade mark has a reputation in the building industry all over the world. Furthermore, Complainant contends that constructors, engineers and others working in the building business all know that the trade mark ROCKWOOL belongs to Complainant and this is also true as regards Respondent.
Registered and Used in Bad Faith
Complainant contends that the disputed domain name was registered and is used in bad faith by Respondent. Complainant asserts that its ROCKWOOL trade mark is known all over the world and it is unlikely that Respondent has not been aware of Complainant¡¯s trade mark rights and company name.
Furthermore, Complainant argues that by registering the domain name, Respondent disrupts the business of Complainant and the use of the domain name for the website clearly associates Respondent with Complainant¡¯s trade marks. Respondent¡¯s website will be listed in any search returns conducted via Internet search engines as a result of the fact that ¡°rockwool¡± is part of the domain name. Complainant also cites two previous UDRP decisions relating to the domain names <rockwoolturk.com> and <internationalrockwool.com> in which the Panelists ordered a transfer of the domain names to Complainant.
Respondent did not reply to Complainant¡¯s contentions formally except for an email dated January 22, 2008 from one ¡°å«ÑóVicky¡±. In the email response, ¡°å«ÑóVicky¡± stated that Respondent is responding to the present Complaint in Chinese. It was further argued that Respondent¡¯s ¡°China-Ocean-Rockwool¡± domain name is obviously different from Complainant¡¯s ¡°rockwool¡± domain name. ¡°å«ÑóVicky¡± elects to have a single panelist to preside over this administrative proceeding. Finally, it also contends that Complainant is constantly interfering with Respondent¡¯s business affairs for which Respondent shall commence legal proceedings against Complainant.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the Case File, no agreement appears to have been entered into between Complainant and Respondent to the effect that the proceedings should be in English.
Complainant has submitted a request that English shall be the language of the present proceedings on the following grounds:
(a) Complainant is a Danish company and the language in Complainant¡¯s company is Danish.
(b) The employees of Complainant, including the employees responsible for trade mark and domain name disputes, understand English and are therefore able to understand Complainant¡¯s legal representative Louise Unmack form Zacco Denmark A/S and all her communication with the Center and Respondent, provided the language of the administrative proceeding is English. Chinese is not understood by the employees of Complainant or by its legal representative. It would be difficult for Complainant and its legal representative to arrange for translation of case materials to or from Chinese to or from Danish/English, and it would also be impossible for the employees of Complainant and its legal representative to check whether or not the communications are correctly translated.
(c) Respondent has an English version of the website in question and it is therefore reasonable to assume that the employees of Respondent company can write and understand English.
(d) In the event that Respondent engages a professional representative for the present proceeding, Complainant is of the view that Chinese professional representative communicate generally in English as they are used to representing Chinese companies in Europe and vice versa. English is thus the appropriate language for the present proceeding.
After considering the circumstances of the present case and the submission of Complainant¡¯s request, the Panel is of the opinion that the language for the present proceedings shall be in English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel¡¯s discretion under the Policy
Paragraph 11 of the Rules provides:
¡°Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.¡±
Thus, parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel¡¯s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The Circumstances of this Case
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. In particular, the Panel notes that (a) the disputed domain name is in English –<china-ocean-rockwool.com>; and (b) Respondent¡¯s website is in English. The Panel also notes that the Center has notified Respondent of the proceedings in both Chinese and English. Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. However, Respondent has chosen not to respond formally to Complainant¡¯s allegations except for a short email response from one ¡°å«ÑóVicky¡±. Considering these circumstances, the choice of English as the language of the present proceedings is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
After considering the circumstances of the present case, the Panel decides that the proceeding shall be English and the decision will be rendered in English.
6.2 Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights in the ROCKWOOL mark in more than 50 countries throughout the world.
In assessing the degree of similarity between Complainant¡¯s trade mark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant¡¯s mark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about Complainant¡¯s building and insulation materials.
The disputed domain name comprises (a) an exact reproduction of Complainant¡¯s trade mark ROCKWOOL, (b) the English words ¡°china¡± and ¡°ocean¡± in front of the word ¡°rockwool¡± connected by two hypens, and (c) the top level domain suffix ¡°.com¡±. Complainant¡¯s mark has been reproduced in its entirety in the disputed domain name. The Panel accepts Complainant¡¯s contention that the English words ¡°china¡± and ¡°ocean¡± are non-distinctive and they do not provide additional specification or sufficient distinction from Complainant or its trade mark ROCKWOOL. In fact, the Panel finds that the addition of the word ¡°china¡± serves to emphasize the geographical location of Complainant¡¯s business which increases the level of confusion of Internet users as Internet users may mistake Respondent¡¯s website as Complainant¡¯s official website devoted to its customers in China.
Accordingly, the Panel finds that the disputed domain name <china-ocean-rockwool.com> is confusingly similar to a trade mark or service mark in which Complainant has rights.
The Panel finds for Complainant on the first part of the test.
B. Rights or Legitimate Interests
The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP Panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to respondent to rebut complainant¡¯s contentions.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word ¡°rockwool¡± in its business operations;
2. There was no evidence to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the ROCKWOOL trade mark;
3. There is no indication that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;
4. Complainant and its trade mark ROCKWOOL enjoy a worldwide reputation with regard to its building and insulation materials of stone wool/mineral wool. Consequently, in the absence of contrary evidence from Respondent, the ROCKWOOL trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.
The Panel finds for Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent¡¯s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website or other on-line location, by creating a likelihood of confusion with Complainant¡¯s mark as to the source, sponsorship, affiliation, or endorsement of Respondent¡¯s website or location or of a product.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
First, the Panel finds that Complainant enjoys a widespread reputation in its ROCKWOOL trade mark with regard to its building and insulation materials of stone wool/mineral wool. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. Therefore, the Panel finds that it is not conceivable that Respondent would not have had actual notice of Complainant¡¯s trade mark rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the ROCKWOOL trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant¡¯s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services. The Panel¡¯s conclusion that Respondent ought to have knowledge of Complainant¡¯s ROCKWOOL mark at the time of registration is further buttressed by the fact that from the contents of the website of Respondent, Respondent appears to be in direct competition with Complainant as Respondent is also selling building and insulation materials of stone wool/mineral wool. As a competitor of Complainant, it is highly unlikely that Respondent does not have actual knowledge of Complainant and its ROCKWOOL mark.
Second, Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent¡¯s website offering Complainant¡¯s products and services in the building and insulation industry. Given the widespread reputation of Complainant¡¯s ROCKWOOL trade mark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant¡¯s widely known and distinctive trade marks, intended to ride on the goodwill of Complainant¡¯s trade marks in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website ¡°www.china-ocean-rockwool.com¡± is either Complainant¡¯s site specially designated for its business in China or the site of official authorized partners of Complainant, which it is not. Consumer confusion is further enhanced in the present case since Respondent is selling similar products on his website and is in direct competition with Complainant. Consequently, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant¡¯s ROCKWOOL trade mark and this constitutes a misrepresentation to the public that Respondent¡¯s website is in one way or the other associated or connected with Complainant¡¯s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.
The Panel finds for Complainant on the third part of the test.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <china-ocean-rockwool.com> be transferred to Complainant.
Susanna H.S. Leong
Dated: March 7, 2008