The Complainant is Roca Sanitario, S.A. of Barcelona, Spain, represented by Ponti & Partners, S.L.P., Spain.
The Respondent is Ty TNHH Roca Viet Nam Cong, Cong Ty TNHH Roca Viet Nam of Ha Noi, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 29, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2018. The Respondent sent an informal communication to the Center on November 15, 2018. On November 28, 2018, the Center notified the Parties that it will proceed to Panel Appointment.
The Center appointed Alistair Payne as the sole panelist in this matter on December 5, 2018. 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 is a leading company in the bathroom sector based in Spain. It was founded in 1917 and operates in more than 170 countries, owns 78 production plants and has over 22,000 employees worldwide. It has sold its products in Viet Nam since 1995 and currently operates through three distributors. The Complainant owns numerous trade mark registrations containing the term ROCA worldwide, including International trade mark registration 266606 for the word mark ROCA designating Viet Nam, among others, registered on March 1, 1963 and protected in Viet Nam since 1983. The Complainant owns various domain names including the ROCA mark and the name of a specific country or city, including by way of example:
, , and .
The Respondent, based in Viet Nam, registered the disputed domain name on April 13, 2017 and is using the disputed domain name to resolve to a website that features bathroom products. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights in the ROCA mark as set out above and that the disputed domain name is confusingly similar to its mark. It says that the disputed domain name wholly contains the ROCA mark at the beginning of the disputed domain name and that the addition of the geographical descriptor “Vietnam” is non-distinctive and does not in any way distinguish it.
The Complainant asserts that the Respondent is not using the disputed domain name in relation to a bona fide offering of goods or services. It submits that the Respondent does not own the trade mark ROCA or ROCA VIETNAM, that it has no commercial relationship with the Complainant, and is not authorised or licensed by the Complainant to use its marks. It further says that in circumstances that the Respondent did not respond to the Complainant’s cease and desist letter prior to the commencement of these proceedings and failed to notify the Complainant of any rights that it may have had to use the mark, that it is apparent that the Respondent has no legitimate interest in the disputed domain name and is only using it to create an association of impression with the Complainant.
As far as bad faith is concerned, the Complainant submits that the Respondent must have been aware of the business and products of the Complainant before receiving the cease and desist letter since they offered various examples of ROCA products at their website at the disputed domain name, including, in particular, a ROCA bath product that was not offered on the Respondent’s website after its receipt of the Complainant’s cease and desist letter. Also, says the Complainant, considering the multiple subsidiaries that it has all over the world that use the formula “ROCA[country or city name]” and the domain names that it owns such as
, , or amongst others, it can be inferred that the Respondent knew about the business of the Complainant at the time of registration of the disputed domain name.
The Complainant says that the only purpose of the Respondent’s registration of the disputed domain name could only be to divert consumers to their website by taking unfair advantage of the Complainant’s goodwill and the reputation of the Complainant’s trade mark ROCA in terms of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent sent an informal communication to the Center on November 15, 2018. However, as this communication was in Vietnamese and not in English, being the language of the Complaint and of the registration agreement for the disputed domain name and as no request was made for the language of the proceedings to be in any language other than English, the Panel will not treat this communication as being a response and will not admit it into the record. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various registered trade mark rights for its ROCA trade mark, including International trade mark registration 266606 for the word mark ROCA designating Viet Nam registered in 1963 and protected in Viet Nam since 1983. The disputed domain name wholly contains the ROCA mark and is confusingly similar on a side by side analysis. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The additional element of the disputed domain name, namely the geographical name “Vietnam”, does not distinguish the disputed domain name from the mark and does not prevent a finding of confusing similarity. See section 1.8 of WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ROCA mark and that the Complaint therefore succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent does not own a trade mark ROCA or ROCA VIETNAM, that it has no commercial relationship with the Complainant, and that the Respondent is not authorised or licensed by the Complainant to use its marks. The fact that the Respondent did not respond to the Complainant’s cease and desist letter sent prior to the commencement of these proceedings raises a further inference that the Respondent has no legitimate interest in the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut this case. As a result, and also for the reasons set out under Part C below, the Panel finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on April 13, 2017 long after the Complainant started its business under the ROCA mark in Viet Nam and after it filed International mark 266606 for the word mark ROCA. In addition, it appears from the substantial scale of the Complainant’s worldwide business that the ROCA mark is very well reputed. Considering the degree of repute attaching to the Complainant’s ROCA mark and that prior to the Complainant’s cease and desist letter in May 2018 that the Respondent was advertising the Complainant’s ROCA bathroom ware products beside its own or third parties’ products on its website at the disputed domain name, then it is reasonable to infer that the Respondent was aware of the ROCA mark at the time of its registration of the disputed domain name.
Under paragraph 4(b)(iv) of the Policy there is deemed evidence of registration and use of a domain name in bad faith where it is found that the Respondent has intentionally attempted to attract Internet users for commercial gain to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement. The Respondent in this case has obviously used the disputed domain name with a view to confuse Internet users into thinking that they are likely to reach the Complainant’s or some associated website but then divert Internet users to the Respondent’s own website at which it appears to promote third party products as well as the Complainant’s ROCA products. Overall the Respondent appears to be seeking to confuse Internet users into thinking that the Respondent’s website at the disputed domain name has some affiliation or connection with the Complainant when this is not the case. This is exactly the sort of conduct in bad faith that the Policy aims to proscribe and the Panel finds that the Respondent’s conduct fulfills the requirements of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complaint also succeeds under this element of the Policy. 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 name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: December 20, 2018
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