The Complainant is Rockwool lnternational A/S of Hedehusene, Denmark, represented by Christina Bilsøe Møller, Denmark.
The Respondent is Yang Kaiwei of Xiamen, Fujian, China, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with Xiamen ChinaSource Internet Service Co., Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2011. On November 2, 2011, the Center transmitted by email to Xiamen ChinaSource Internet Service Co., Ltd. a request for registrar verification in connection with the disputed domain names. On November 3, 2011, Xiamen ChinaSource Internet Service Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 9, 2011, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceeding. On November 10, 2011, the Respondent requested that Chinese be the language of the proceeding. On November 11, 2011, the Complainant requested that English be the language of the proceeding.
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 November 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 5, 2011. The Response was filed with the Center on November 17, 2011.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on December 8, 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 A. Complainant
The Complainant is a company incorporated in Denmark.
The Complainant is the owner of trade mark registrations for the trade mark ROCKWOOL (the “Trade Mark”) including a national registration in Denmark and an international registration under the Madrid Protocol covering numerous countries, including China, where the Respondent is based. B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain names were registered on May 29, 2011 and May 23, 2011, respectively. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant has used the Trade Mark extensively since 1937 in respect of insulation materials and building materials, including in China through its affiliated companies Rockwool Firesafe Insulation (Guangzhou) Co. Ltd. and Rockwool Firesafe Insulation (Shanghai) Co. Ltd. The Complainant is the world’s leading supplier of innovative insulation products based on stone wool, and the Trade Mark is well known worldwide in respect of such insulation materials.
The disputed domain names incorporate the Trade Mark in its entirety. The addition of the generic word “insulation”, which describes the Complainant’s products produced and sold under the Trade Mark, does not serve to prevent the disputed domain name from being confusingly similar to the Trade Mark.
The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent does not have any trade mark rights in respect of the disputed domain names and the Complainant has not licensed or otherwise authorized the Respondent to use the Trade Mark or the disputed domain names.
The Respondent is using the disputed domain names to direct traffic to the website of the Respondent which provides information about stone wool insulation materials under the Trade Mark and encourages people to buy products similar to those produced and sold by the Complainant (the “Website”).
In pre Complaint correspondence with the Complainant, the Respondent offered to sell the disputed domain names to the Complainant. This indicates that the Respondent has acquired the disputed domain names with the intention to sell them to the Complainant or one of its competitors for a profit.
The Complainant is renowned for its innovative products and systems based on stone wool. The Trade Mark is distinctive and well known internationally within the insulation industry. The Complainant’s products are sold worldwide under the Trade Mark, including in China. On the basis of this extensive market penetration, the Respondent must have known of the existence of the Trade Mark prior to registering the disputed domain names. This prior knowledge constitutes bad faith in registration.
By using the disputed domain names in respect of identical goods to those of the Complainant, the Respondent has intentionally attempted to divert present and potential new Internet users to the Website for commercial gain by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Website or the products on the Website. This conduct constitutes bad faith use of the disputed domain names. B. Respondent
The Respondent made the following submissions in the Response.
Considering that the Trade Mark is ROCKWOOL, and the disputed domain name contains the Trade Mark in its entirety, the Respondent indicated it was willing to give up its registration for this disputed domain name, and the Response was filed regarding the disputed domain name only.
The Respondent claimed the Trade Mark is ROCKWOOL, however the Complainant has not registered the trade marks “ROCK WOOL” (with a space) and “ROCK-WOOL” (with a hyphen). “Rock-Wool” is quite different from and not confusingly similar to the Complainant’s Trade Mark ROCKWOOL.
The disputed domain names were not registered for an illegitimate purpose and were registered with the permit issued by the Chinese Ministry of Industry and Information Technology.
The disputed domain names have not been registered and used in bad faith. The Respondent’s purpose in registering the disputed domain names was to set up the Website to sell insulation products, and it registered the disputed domain names as “rock wool” is the English language wording for “insulation”.
The Complainant’s Trade Mark is ROCK WOOL and the products it sells are “rock wool”. The Respondent registered the disputed domain name (with a hyphen) so as to set up its Website linked to the disputed domain names and avoid any disputes as to its name and products.
The Website shows up prominently on Internet search engines when searching under the words “rock wool”.
There are lots of other entities who have registered domain names comprising the Trade Mark, such as , , and . However, the Complaint was filed against the disputed domain name , because the disputed domain name has a higher ranking in Internet search engines. The Complaint was filed for improper purposes. 6. Discussion and Findings 6.1 Language of the Proceeding
The language of the registration agreements for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) Both parties are familiar with English;
(2) The Respondent’s knowledge of English is evidenced by the fact the disputed domain names “are both build up” (sic) in English; and
(3) The pre Complaint correspondence between the parties was in English.
The Respondent has requested that the decision be rendered in Chinese as the Respondent’s English is not good and the Respondent will have difficulty corresponding in English.
Xiamen ChinaSource Internet Service Co., Ltd. has transmitted to the Center its verification response confirming that the language of the registration agreements for the disputed domain names is Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel notes, for the reasons specified by the Complainant in its submissions (and referred to above) regarding the language of the proceeding, it appears the Respondent is in fact proficient in the English language (Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600; Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047). Although the Panel is not quite clear as to the meaning of the assertions of the Complainant’s representatives that the disputed domain names are “both build up” (sic) in English, it is nonetheless quite clear from the evidence filed with the Complaint that the Website has been set up and used solely in English, and, furthermore, that the Respondent has corresponded with the Complainant’s representatives in fluent English prior to the filing of the Complaint.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) that:
(1) It will accept the filing of the Complaint in English;
(2) It will accept the filing of the Response in Chinese;
(3) It will render a decision in English. 6.2 Decision A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate by many decades the dates of registration of the disputed domain names.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
Each of the disputed domain names comprises the Trade Mark in its entirety. The disputed domain name is identical to the Trade Mark save that it contains a hyphen in between the words “rock” and “wool”. The disputed domain name is identical to the Trade Mark save that it contains the non distinctive suffix “-insulation” which describes the products of both the Complainant and the Respondent. It is trite that use of punctuation marks such as hyphens does not serve to distinguish domain names from trade marks under the Policy.
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
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 names:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain names by decades. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The evidence suggests the Respondent is using the disputed domain names in respect of the Website, which is an English language website promoting insulation products under the Trade Mark in direct competition with the Complainant. Using the Complainant’s Trade Mark in this manner in order to advertise and sell competing insulation products cannot possibly give rise to any rights or legitimate interests in respect of the disputed domain names.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
Pursuant to paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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.”
The Panel has no hesitation in finding that the Respondent has registered the disputed domain names comprising the Trade Mark, without the authorisation or approval of the Complainant, in order to profit by attracting users to the Website. The Panel finds such use of the Trade Mark in this manner is clear evidence of bad faith.
The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Having made a finding of bad faith under paragraph 4(b)(iv) of the Policy, it is not necessary for the Panel to make any findings in respect of bad faith registration and use under paragraph 4(b)(i) of the Policy. The Panel would simply note that, although the Respondent has offered both of the disputed domain names for sale to the Complainant, there is no evidence on the record as to whether the Respondent intended selling the disputed domain names to the Complainant for valuable consideration in excess of its out-of-pocket expenses directly related to the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 disputed domain names and be transferred to the Complainant.
Sebastian M.W. Hughes
Sole Panelist
Dated: December 12, 2011
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