WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockwool Internatinoal A/S v. Siroc
Case No. D2007-1757
1. The Parties
The Complainant is Rockwool International A/S, of Hedehusene, Denmark, represented by Zacco Denmark A/S, Denmark.
The Respondent is Siroc Enterprise Limit, of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <rockwoolfactory.com> is registered with Network Solutions, LLC (hereinafter the “Domain Name”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2007. On December 3, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Name. On December 3, 2007, Network Solutions, LLC 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”), 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 December 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2007.
The Center appointed Anna Carabelli as the sole panelist in this matter on January 8, 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.
The Panel independently determined and agrees with the assessment of the Center that the Complaint formally complies with the requirements of the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided evidence of the following circumstances which have not been contested by the Respondent.
The Complainant holds several trademark registrations of the word mark “ROCKWOOL”, in connection with stone wool products, among which International Trademark Registration No. 813306 registered on October 9, 2003 which is based on the national Danish trademark registration, with priority as of March 13, 1937.
The Complainant operates a website under the domain name <rockwool.com>.
The Respondent registered the Domain Name on October 9, 2007.
The Domain Name is used by the Respondent to operate a website to promote its own business in competition with the Complainant’s.
5. Parties’ Contentions
The Complainant contends that:
- the Complainant was founded in 1909; has a turnover of approximately EUR 1,5 billion; operates 22 factories in 14 countries in Europe, North America and Asia; has a world-wide network of sales office; and is the leading producer in the world of stone wool/mineral wool;
- the Complainant holds more than 50 trademark registrations in various countries in the world;
- the Domain Name is confusingly similar to the Complainant’s registered trademark “ROCKWOOL” as the Domain Name is composed of the Complainant’s trademark in its entirety with the addition of the word “factory” which, not only has no distinctiveness, but actually increases the risk of confusion between the Domain Name and the Complainant’s registered trademarks;
With respect to the Respondent, the Complainant further contends that:
- the Respondent has no rights or legitimate interest with respect to the Domain Name;
- the Complainant’s trademark has acquired a reputation to the extent that in the building industry it is associated to the Complainant;
- the Respondent has registered and is using the Domain Name in bad faith since: (i) given the world-wide reputation of the Complainant, it is unlikely that the Respondent was not aware of the Complainant’s trademark rights and company name; and (ii) the website operated under the Domain Name is clearly inspired to the Complainant’s website, and (iii) the Domain Name is used to disrupt the business of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered trademark “ROCKWOOL” as the Domain Name incorporates the Complainant’s trademark in its entirety and the addition of the word “factory” to the Domain Name, being a generic word, is not capable to differentiate the Domain Name from the Complainant’s registered trademarks.
Indeed, as established by several WIPO UDRP decisions: (i) the incorporation in a domain name of a distinctive trademark in its entirety creates sufficient similarity between that trademark and the domain name to create a likelihood of confusion (VoiceStream Wireless Corporation v. Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com, WIPO Case No. D2002-0313); and (ii) the addition of generic terms to a domain name (such as “factory”) incorporating a widely known trademark in its entirety, not only does not eliminate a likelihood of confusion (F. Hoffmann-La Roche AG v. Cheaptamiflu.net, WIPO Case No. D2005-1256; Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories), WIPO Case No. D2004-0917; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232;) but may even reinforce the impression of an affiliation among the domain name and the complainant (Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755).
In the light of the above, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The Complainant has established prima facie evidence that the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c) of the Policy. According to a consistent line of WIPO UDRP decisions, in such a case the burden of proof shifts to the Respondent to rebut the evidence (see among others Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683). As a consequence, the Respondent’s failure to rebut the Complaint’s allegations, allows the Panel to infer, taking into consideration the circumstances of this case, that the Respondent has no such rights or legitimate interests.
Consequently, the Panel deems that the Respondent has no rights or legitimate interests in the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As established in section 6.A. above, the Domain Name is confusingly similar to the Complainant’s trademarks which were registered before the registration of the Domain Name by the Respondent.
Secondly, the Panel accepts that the Complainant’s name is well known world-wide in the industry as it operates 22 factories in 14 countries in Europe, North America and Asia and has a world-wide network of sales offices.
In the light of the above, the Panel deems that it is hard to believe that the Respondent was not aware of the Complainant’s trademark rights at the time of registration of the Domain Name.
Moreover, the Domain Name is used in connection with a website through which the Respondent promotes its own business in direct competition with the Complainant’s. Thus, the Respondent, relying on the notoriety of the Complainant’s trademarks and name, is using the Domain Name to divert Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement.
In light of all the above circumstances, the Panel finds that the Complainant has established the element of bad faith according to paragraph 4(a)(iii) of the Policy.
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, <rockwoolfactory.com> be transferred to the Complainant.
Dated: January 22, 2008