WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KNAUF Insulation Holding GmbH, KNAUF Insulation SPRL v. Belize Domain WHOIS Service Lt
Case No. D2010-1218
1. The Parties
The Complainants are KNAUF Insulation Holding GmbH of Iphofen, Germany and KNAUF Insulation SPRL of Vise, Belgium, represented by Office Kirkpatrick, SA, Belgium.
The Respondent is Belize Domain WHOIS Service Lt, Belize, Wisconsin, United Sates of America.
2. The Domain Name and Registrar
The disputed domain name <knauffinsulation.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2010. On July 23, 2010, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. On July 23, 2010, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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”).
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 August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2010.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 1, 2010. 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
KNAUF Insulation Holding GmbH is a corporation created under German laws with 30 years of experience in the insulation industry. The Complainants, and its subsidiaries and related entities, are collectively known as “Knauf Insulation” and employ approximately 5000 people worldwide.
The Complainants maintains a website at “www.knaufinsulation.com”.
In addition, the Complainants are the owners of various registered trademarks, including:
(1) International registration No. 985 208, for the word mark KNAUF INSULATION on October 21, 2008 with the priority to July 18, 2010 in Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Belarus, Switzerland, the People’s Republic of China, Egypt, Croatia, Islamic Republic of Iran, Kyrgyzstan, Democratic People’s Republic of Korea, Liechtenstein, Morocco, Monaco, Republic of Moldova, Montenegro, The former Yugoslav Republic of Macedonia, Mongolia, Serbia, Russian Federation, Syria, Ukraine, Australia, European Community, Georgia, Iceland, Republic of Korea, Norway, Turkmenistan, Turkey, Uzbekistan, Algeria, Kazakhstan, and Tajikistan for the following classes: 17, 19, 22 and 41.
(2) Benelux registration n°847 755 for the word mark KNAUF INSULATION on July 18, 2008 for the following classes: 17, 19, 22 and 41.
(3) German registration n° 307 13 113 for the word mark KNAUF INSULATION on April 2, 2007 for the following classes: 7, 17 and 19.
(4) Slovenian registration n° 200770298 for the word mark KNAUF INSULATION on November 24, 2009.
(5) Croatian registration n° Z20070432 for the word mark KNAUF INSULATION on March 5, 2007 to designate goods and services in classes 17, 19 and 37.
5. Parties’ Contentions
The Complainants assert that the disputed domain name <knauffinsulation.com> is very similar to the trade name and company name Knauf Insulation. Indeed, the Complainants add that the signs differs only by one letter namely double “f” in the disputed domain name <knauffinsulation.com> instead of single “f” (in the trade name and company Knauf Insulation), so the Complainants argue that this is a case of typosquatting (using a small typographical variation between a famous trademark and the disputed domain name in order to attract unfairly Internet traffic).
Additionally, the Complainants allege that the domain name <knauffinsulation.com> is also confusingly similar to the trademarks owned by them. The Complainants assert that the trademark KNAUF INSULATION and the disputed domain name <knauffinsulation.com> are phonetically identical and that the addition of the letter “f” in the domain name is irrelevant. The Complainants also point out that the word trademarks (KNAUF INSULATION) are registered with a space between the sign “knauf” and “insulation” while the dispute domain name <knauffinsulation.com> is registered without any space. The Complainants add that since it is not possible to include spaces in the domain name system, many UDRP decisions have concluded that the domain names are identical or confusingly similar to trade marks in similar circumstances.
The Complainants add that the domain name <knauffinsulation.com> is confusingly similar to the prior domain name owned by the second complainant: <knaufinsulation.com>, created on April 26, 2000.
The Complainants assert that the Respondent never used the disputed domain name. By typing the address “www.knauffinsulation.com”, the results do not show any personal page of the Respondent but a webpage with “pay-per-click” links to third party websites, including links to direct competitors of the Complainants and other insulation and building products related sites.
The Complainants say that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark. The Complainant alleged that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent because the latter is a known cybersquatter. Previous UDRP panels have found bad faith use and registration of domain names on the part of the Respondent in several other domain name dispute proceedings.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants must prove the following:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants provided evidence that they have registered rights in the KNAUF INSULATION trademark. The Domain Name <www.knauffinsulation.com> combines the registered trademark KNAUF INSULATION in its entirety with a typographical error: the addition of the letter “f”. For the purpose of this UDRP proceeding the disputed domain name must be considered confusingly similar to the Complainants trademark (See H-D Michigan, Inc. v. Metal Horse Motorcycles, WIPO Case No. D2003-0781; Epson Europe BV v. Armitage, WIPO Case No. D2009-0995; The Sage Group Plc v. Internet Commerce, Inc., WIPO Case No. D2003-0236; Hoffmann-La Roche Inc. v. John Sanders, WIPO Case No. D2009-0157; Harrods Limited v. Josh Crutchley, WIPO Case No. D2008-0653; Bayerische Motoren Werke AG v DLR, WIPO Case No. D2001-1231).
The addition of the letter “f” does not render the disputed domain names significantly different from the Complainants trademark. Such minimal change to a mark is quintessential “typosquatting” and this practice has long been recognized as a strong ground for a finding of confusing similarity within the meaning of paragraph 4(a)(i) of the Policy (See, EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Igor S Panin, WIPO Case No. D2009-1503; Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095, and other cases cited therein).
The Panel finds that the Complainants, therefore, have fulfilled the first requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As the Respondent is in default in this matter, it has not presented any claim to its rights in the disputed domain name or that it has a legitimate interest in this domain name, and the Complainant convincingly denies that the Respondent could have any such rights.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
i. before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you 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 trademark or service mark at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the trademarks. The Complainants have demonstrated prior use of the disputed domain name <knaufinsulation.com> which precede the Respondent's registration of the domain name by several years. The Complainants have therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 2.1; Do The Hustle, LLC v.Tropic Web, WIPO Case No. D2000-0624 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that any of the circumstances listed in paragraph 4(i) of the Policy apply in this case. The Respondent has not provided the Panel with evidence that it has acquired any trademark rights in respect of the domain name or that the domain name is used in connection with a bona fide offering of goods or services. In fact, according to the evidence the domain name is used to provide pay-per-click advertising.
Therefore, the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Complainants must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
The Complainants’ allegations with regards to the Respondent's registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
Typosquatting has long been held as an example of bad faith (See, e.g., Sanofi-aventis v. Elizabeth Riegel and Andrew Riegal, WIPO Case No. D2005-1045; Estée Lauder Inc. v. estelauder.com and Jeff Hanna, WIPO Case No. D2000-0869). An Internet user who misspells the Complainant’s name or trademark – either through ignorance or inadvertence – will find himself or herself redirected to the Respondent’s site which is a wholly different site with no connection whatever to the Complainants’website “www.knaufinsulation.com”. The Respondent is taking advantage of that error or ignorance and is using this error for its own commercial gain.
In the instant case, typosquatting demonstrates the existence of bad faith at the time of registration. The fact that the Respondent used a combination of the terms “knauf” and “insulation” with the addition of the double “f” for the disputed domain name in the year 2006, while the domain name <knaufinsulation.com> was already registered 6 years before (since April 6, 2000) is in the panel’s view, evidence that the domain name was registered in bad faith.
The Panel considers that the Respondent was clearly aware of the Complainants, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and the Complainants rights.
As described in the Complaint the disputed domain name is used to provide links to websites in competition with the Complainants. The Panel therefore finds that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark (See, Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623; Hoffmann-La Roche Inc. v. Online Pharma, WIPO Case No. D2006-0628; Sanofi-Aventis , Aventis Pharmaceuticals Inc., Aventis Pharma S.A. v. Conor O’ Connor, WIPO Case No. D2006-1310 and Aventis Pharmaceuticals Inc., Aventis Pharma SA v. Goldie Fishero, WIPO Case No. D2004-0094).
Likewise, the Respondent's history of registering and using the domain names without any legitimate rights and interests, which gave rise to over thirty (30) previous UDRP decisions made against the Respondent as a result thereof, , in the view of the Panel, is further overwhelming evidence of bad faith on the part of the Respondent (See Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236 and General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834).
Another particular circumstance to take into account in this case is that Respondent has provided, and failed to correct or update false contact details, in breach of its registration agreement (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Home Director, Inc. v. HomeDirecto, WIPO Case No. D2000-0111; Royal Bank of Scotland Group v. Stealth Commerce v. a.k.a. Telmex Management Services, Inc., WIPO Case No. D2002-0155).
The failure of the Respondent to answer the Complaint and take any part in these proceedings also suggests in combination with the other mentioned factors bad faith on the part of the Respondent (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name in bad faith.
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, <knauffinsulation.com> be transferred to the Complainants.
Pablo A. Palazzi
Dated: September 15, 2010