WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockwool International A/S v. Taher Investment, Fathi Taher
Case No. D2008-0782
1. The Parties
Complainant is Rockwool International A/S, Hedehusene, Denmark, represented by Zacco Denmark A/S, Denmark.
Respondent is Taher Investment, Fathi Taher, Amman, Jordan.
2. The Domain Name and Registrar
The disputed domain name <rockwoolvietnam.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2008. On May 22, 2008, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On May 23, 2008, Dotster, Inc. transmitted by email to the Center its verification response indicating that Fathi Taher was the domain name registrant’s “listed individual.” As a result, Complainant was advised by the Center, via email dated May 30, 2008, that the Complaint should be modified to add Fathi Taher to Respondent Taher Investment. The Complaint was amended accordingly on June 2, 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2008.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 23, 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
Founded in 1909, Complainant, Rockwool International A/S, is the world’s leading producer of stone wool/mineral wool. Headquartered in Denmark, the Rockwool Group operates 22 factories in 14 countries in Europe, North America, and Asia and has a worldwide network of sales offices, distributors and partners.
Complainant owns the trademark ROCKWOOL, as used on building materials of stone wool/mineral wool and insulation materials of stone wool/mineral wool. The mark is registered in over 50 jurisdictions. Complaint, Annex 5 and 6.
The disputed domain name, <rockwoolvietnam.com>, was registered on January 23, 2008, and is used for a search portal for insulation products and leads to the websites of Complainant’s competitors. Complaint, Annex 7.
5. Parties’ Contentions
Complainant contends that the disputed domain name is identical or confusingly similar to its ROCKWOOL mark. It notes that the domain name includes the entirety of Complainant’s mark, simply adding the word “Vietnam.” Complainant asserts that the term “Vietnam” has no distinctiveness and that its inclusion as part of the domain name “only increases the risk of confusion, as the combination ROCKWOOL VIETNAM gives associations to the name of a Vietnamese company in the ROCKWOOL Group […]. There is a significant risk that the customers of the complainant would be mislead into believing that the disputed domain name belongs to and is used by the complainant or the complainant’s subsidiary, or that the domain name has been registered and is used with the prior consent of the Complainant.”
To the best of Complainant’s knowledge, Respondent has no rights or legitimate interests in the disputed domain name.
With respect to the issue of “bad faith” registration and use, Complainant maintains that its mark is known all over the world and “it is unlikely that the respondent has not been aware of the Complainant’s trademark rights and company name.” According to Complainant, by registering the domain name and using it for a website containing a search portal, Respondent disrupts the business of Complainant. Complainant asserts that, when conducting searches of “rockwool” via Internet search engines, Respondent’s website will be listed due to the fact that “rockwool” is part of the domain name.
Complainant notes that, on March 6, 2008, it sent a letter to Respondent (Complaint, Annex 2), requesting transfer or cancellation of the disputed domain name. The letter was re-sent via email on March 7, 2008. Complaint, Annex 4. Respondent has not responded to the letter.
Complainant further points out that it has been successful in obtaining the transfer of other domain names incorporating the ROCKWOOL mark. Such domain names include <rockwoolturk.com>, <internationalrockwool.com>, <rockwoolfactory.com>, and <china-ocean-rockwool.com>.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <rockwoolvietnam.com> is confusingly similar to the mark ROCKWOOL. As noted by Complainant, the term “Vietnam,” being geographically descriptive in nature, lacks distinctiveness and, thus, its inclusion in the domain name is not sufficient to avoid a finding of confusing similarity. Similarly, the use of the top-level domain “.com” in the domain name generally is ignored when assessing the issue of identity or confusing similarity. See VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 (August 22, 2000) (<vat.com> identical to VAT trademark).
The Panel further rules that Complainant, as a result of its ownership of registrations for and use of the ROCKWOOL mark, has rights in such mark.
B. Rights or Legitimate Interests
The Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent has failed to demonstrate any such rights or legitimate interests. Thus, the Panel rules that Complainant has met its burden of proof on this element of the Policy. See Croatia Airlines d.d. v. Modern Emprie Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003).
C. Registered and Used in Bad Faith
The Panel holds that the domain name <rockwoolvietnam.com> was registered and is being used in bad faith. The Panel finds that, by using the disputed domain name, Respondent attempted to attract, for commercial gain1, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy. The Panel agrees with Complainant’s assertion that “[t]here is a significant risk that the customers of the complainant would be mislead into believing that the disputed domain name belongs to and is used by the complainant or the complainant’s subsidiary, or that the domain name has been registered and is used with the prior consent of the Complainant.”
Moreover, given Complainant’s worldwide use of its ROCKWOOL mark, it is not conceivable that Respondent was not aware of such mark at the time it registered the disputed domain name. This, along with Respondent’s failure to respond to Complainant’s letter or follow-up email, further supports a determination of “bad faith” registration and use. See, e.g., Microsoft Corporation v. Superkay Worldwide Inc., WIPO Case No. D2004-0071 (March 29, 2004).
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 <rockwoolvietnam.com> be transferred to Complainant.
Jeffrey M. Samuels
Dated: July 29, 2008
1 Presumably, Respondent receives a fee every time the sponsored link of one of Complainant’s competitors is accessed via Respondent’s website.