Complainant is Rockwool lnternational A/S of Hedehusene, Denmark, represented by Gorrissen Federspiel, Denmark.
Respondent is Vivalda of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2011. On August 26, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On August 29, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 23, 2011.
The Center appointed Willem J.H. Leppink as the sole panelist in this matter on September 29, 2011. 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
The Domain Name was registered on April 11, 2006.
Complainant is the owner of an International Registration for the trademark ROCKPANEL (hereinafter referred to as the “Trademark”) for – inter alia – certain construction materials. The Trademark designates amongst other countries, Germany, Switzerland, France and Italy. The Trademark was registered on January 11, 1995. 5. Parties’ Contentions A. Complainant
Complainant has undisputedly stated the following.
The Domain Name includes the entire Trademark. Therefore the Domain Name is identical to the Trademark.
The Respondent has no rights or legitimate interests in the Domain Name. Complainant has not approved the use of the Trademark by Respondent, nor is Respondent an authorized dealer of Complainant’s products. Albeit that Respondent sells Complainant’s products, Respondent also sells products of Complainant’s competitors. Consequently, there might be a situation of bait and switch. Moreover, as the relationship between Complainant and Respondent is not disclosed, Respondent is likely to mislead Internet users into believing that the website active under the Domain Name is operated by or endorsed by or affiliated with Complainant.
In addition, the Domain Name was registered and is being used in bad faith. Bearing in mind that Respondent resells Complainant’s products, Respondent must have been fully aware of Complainant’s trademark rights when registering the Domain Name. Respondent is using the Domain Name to create the assumption that there is an affiliation, however indirect, between Complainant and Respondent, which demonstrates bad faith pursuant to paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order for the Domain Name to be transferred to it:
The Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
Respondent has no rights or legitimate interests in respect of the Domain Name; and
The Domain Name has been registered and is being used in bad faith.
As Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint. A. Identical or Confusingly Similar
The evidence shows that Complainant has rights in the Trademark. There is no doubt that the Domain Name is identical to the Trademark for the purposes of the Policy as the Domain Name incorporates the Trademark in its entirety.
Therefore Complainant has proven that the first element of article 4(a) of the Policy is present. B. Rights or Legitimate Interests
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. As a consequence, the burden of evidence shifts to Respondent to show that it has rights or legitimate interests in the Domain Name. The Panel finds that Complainant has established such a prima facie case due to the fact that it has stated that it has not granted Respondent permission to use the Trademark as a Domain Name. With reference to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the Panel finds that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, as Respondent has not complied with the requirements set out in the aforementioned decision.
To be bona fide, the offering must meet several requirements. Those at the minimum, the following:
“Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (WIPO January 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab,WIPO Case No. D2000-1774 (WIPO February 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc.,WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton,WIPO Case No. D2000-1201 (WIPO November 14, 2000) (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods.,WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers,WIPO Case No. D2000-1525 (WIPO January 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”
In this case, Respondent's conduct does not meet all these requirements. Respondent is not an authorized seller and repair center, is not using the Domain Name to promote only “Rockpanel” goods and services, and does not disclose that it is merely a reseller, not Complainant itself.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests (under the Policy) in respect of the Domain Name. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
(i) “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant has established that Respondent has intentionally attempted to attract, for commercial gain, Internet users to a third party online location, by using the Domain Name, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent has not rebutted Complainant’s allegations. The Panel takes into consideration that Respondent is familiar with Complainant’s Trademark as it has been selling Complainant’s products bearing the Trademark.
Therefore, the third element of the Policy has been met. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Willem J.H. Leppink
Sole Panelist
Dated: October 10, 2011
Full & Egal Universal Law Academy