The Complainant is Rockwool International A/S of Hedehusene, Denmark, internally represented.
The Respondents are YellowBlue Media Ltd and Steven Pickett of Welling, Kent, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names And Registrar
The disputed domain names and are registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 17, 2012, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On the same date, Tucows Inc. transmitted by email to the Center its verification response indicating that the first Respondent, YellowBlue Media Ltd, is listed as the registrant and that the second Respondent, Steven Pickett, is listed as the Administrative and Technical Contact, and providing the contact details of both. On February 22, 2012, the Center transmitted by email to Tucows Inc. a request to clarify who is the actual registrant of the disputed domain names. On the same date, Tucows Inc. transmitted by email to the Center its clarification that the second Respondent is the registrant of the disputed domain names. In response to an invitation of the Center to amend the Complaint with respect to the identity of the Respondent, the Complainant filed an amendment to the Complaint on February 27, 2012.
The second Respondent sent a pre-commencement email communication to the Center on February 27, 2012, concerning the identity of the Respondent to the Complainant. On the same date, the Center replied by email stating that the Registrar had identified the second Respondent as the registrant of the disputed domain name but that the Panel will make the final determination of the Respondent identity.
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” 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 Respondents of the Complaint, and the proceedings commenced on February 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 19, 2012. Neither the first Respondent nor the second Respondent submitted a response. Accordingly, the Center notified the Respondents’ default on March 20, 2012.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 28, 2012. 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 Complainant was founded in 1937, and is widely-known globally within the insulation industry, working in horticultural, industrial, marine and modern infrastructure areas. It is a leading supplier of products and systems based on stone wool. It has over 8,800 employees in more than 30 countries, catering for customers all over the world. In 2010 it generated sales of DKK 11.7 billion.
The Complainant is the owner of the trademark ROCKWOOL, which was first registered in Denmark in 1937. The Complainant or its affiliated companies have applied for or have registered numerous trademarks containing the word “rookwool”, such as ROCKWOOL FIRESAFE INSULATION, in many European and Asian countries, including in the United Kingdom of Great Britain and Northern Ireland, from at least as early as 2000. The Complainant or its affiliated companies are the registrants of numerous domain names containing the word “rockwool”, including , and .
The disputed domain names were registered on January 27, 2004. Each disputed domain name currently resolves to a website that purports to offer for sale “Grodan rockwool growing medium” to horticulturalists, indoor gardeners and hydroponics enthusiasts. Grodan is the name of a company that is 100% owned by the Complainant and that markets horticultural solutions based on stone wool under the trademark ROCKWOOL.
On October 26, 2011, the Complainant sent a cease and desist letter to the second Respondent. There followed a number of emails between the Complainant and the second Respondent concerning the permissibility of the second Respondent’s use of the word “Rockwool”. The two parties failed to reach an agreement on this issue. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are quasi identical and at least confusingly similar to the Complainant’s trademark ROCKWOOL because they comprise it in their entirety. The disputed domain name only adds the generic word “shop” which perfectly describes the intended use of the website to which its resolves, namely, to sell products produced by the Complainant. The disputed domain name infringes in the same manner, with the addition of the words “the” and “shop” surrounding the ROCKWOOL trademark. The similarity creates a high risk of confusion among consumers and Internet users who will confuse the information found on the websites to which the disputed domain names resolve as being provided or accepted by the Complainant.
The Complainant contends that the Respondents have no legitimate interest in the disputed domain names because: (i) it has not licensed or authorized the Respondents to use its trademark ROCKWOOL, nor have the Respondents acquired any trademark rights that could support the use of the disputed domain names; (ii) the Respondents are using the disputed domain names for commercial gain by directing traffic to the website to which they resolve; (iii) by merging the word “shop” with the word “rockwool” the Respondents are acknowledging the trademark ROCKWOOL while at the same time indicating an interest in commercial exploitation of said brand; and (iv) by using the Complainant’s trademark to misleadingly divert consumers, the Respondents are obviously trying to benefit from confusion among consumers and are thus clearly breaching the trademark rights of the Complainant.
The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith because: (i) given the extensive market penetration of the Complainant’s ROCKWOOL products, the Respondents should have known of the existence of the Complainant’s trademark prior to registering the disputed domain names; (ii) the Respondents have intentionally attempted to misleadingly divert present and potential new Internet users to the website to which the disputed domain names resolve for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or its products; and (iii) the use of the Complainant’s distinctive trademark for sales purposes clearly indicates bad faith on behalf of the Respondents. B. Respondents
The Respondents did not reply to the Complainant’s contentions. 6. Procedural Issue – Respondent Identity
In a pre-commencement communication with the Center, the second Respondent questioned the Registrar’s clarification that the second Respondent is the registrant of the disputed domain names. The second Respondent stated that “I consider my company to be the owner of the domain (YellowBlue Media Ltd) not myself” and that “If I respond to this complaint, I will be doing so in the name of my company”. The Center replied to this communication informing that the Registrar had identified the second Respondent as the registrant of the disputed domain names, but that “the final determination of the Respondent identity will be for the Panel”.
Paragraph 1 of the Rules defines “Respondent” to be “the holder of a domain-name registration against which a complaint is initiated”. The issue of who should be regarded the “holder” of a disputed domain name was considered by this Panel in some detail in Kimberly-Clark Corporation v. N/A, Po Ser and N/A, Hu Lim,WIPO Case No. D2009-1345. As that case explained, the “holder” of a disputed domain name is not limited to the registrant of record; in certain circumstances, it can include any person who has such an interest in the domain name that provides it with apparent or actual control over the domain name.
In this Panel’s opinion, no aspect of the outcome of this Complaint turns on the issue of whether the Respondent to the Complaint should be considered the first Respondent, or the second Respondent, or both. According to the second Respondent’s communication with the Center, the first Respondent is a company controlled by the second Respondent. Thus, for the purposes of this Complaint, the first Respondent and the second Respondent can be treated as a single entity. 7. Discussion And Findings A. Identical or Confusingly Similar
Both of the disputed domain names incorporate the whole of the Complainant’s trademark ROCKWOOL, and add either the word “shop” or the words “the” and “shop”. In both cases, the dominant component of the disputed domain name is the Complainant’s trademark. The additional words do not lessen the inevitable confusion of the disputed domain names with the Complainant’s trademark. Accordingly, this Panel finds that both of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondents are not licensees of, or otherwise affiliated with, the Complainant. It appears from the screenshots of the websites to which the disputed domain names resolve that the Respondents are purporting to sell stone wool horticultural products that are produced by the Complainant’s subsidiary, Grodan. That is to say, the Respondents are acting as an unauthorized reseller of the Complainant’s products.
It is well established under the Policy that a respondent who is a reseller of goods or services to which the disputed domain name relates can be making a bona fide offering of those goods or services for the purposes of paragraph 4(c)(i) of the Policy, and thus can have a right or legitimate interest in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, if certain requirements are satisfied. These requirements include: (1) the respondent must actually be offering goods or services related to the trademark in respect of which the domain name is confusingly similar; (2) the respondent must offer only those goods or services in connection with the disputed domain name; (3) the respondent must have disclosed its true relationship with the owner of the trademark to which the domain name is identical or confusingly similar; and (4) the respondent must not have attempted to “corner the market” in domain names that reflect that trademark – see, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”). This principle has been extended to apply to resellers who do not have a contractual relationship with the trademark owner (i.e., unauthorized resellers) – see, e.g., DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481.
Since the Respondents have not filed a Response, there is nothing in the present record of this case to show whether the first and second of these requirements are satisfied. What is clear from the record in this case, however, is that the third requirement is not satisfied. The screenshot of the website to which each of the disputed domain names resolves shows that the Respondents have not disclosed their true relationship with the Complainant – namely, that they are an unauthorized reseller. To the contrary, it appears the websites purport to disclose that the Respondents are closely associated with the Complainant. For example, both websites contain the statement “From The World’s Only Rockwool Shop”. In this Panel’s view, such a statement is likely to be read as an assertion that the Respondents are the sole authorized supplier of stone wool products under the trademark ROCKWOOL.
As stated in Oki Data: “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.” The Respondents’ websites fail this test. Accordingly, this Panel finds that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
The evidence on the record provided by the Complainant with respect to the use of its ROCKWOOL trademark, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy this Panel that the Respondents most likely knew of the Complainant’s trademark at the time of registration of the disputed domain names and knew that they had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondents’ use of the disputed domain names indicates that the Respondents have used the disputed domain names to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Pursuant to paragraph 4(b)(iv) of the Policy, this is evidence of the registration and use of the disputed domain names in bad faith. Accordingly, this Panel is satisfied that the disputed domain names have been registered and are being used in bad faith. 8. 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.
Andrew F. Christie
Sole Panelist
Dated: April 11, 2012
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