The Complainant is Rockwool International A/S, Denmark, represented by Beijing AnJie Law Firm, China.
The Respondent is Mr. Zhu, TUNGKIN INDUSTRY Co.Ltd, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2020. On August 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 24, 2020. The Center verified that the Complaint together with the amended 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 August 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2020. The Response was filed with the Center on September 18, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 30, 2020. 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 multinational company headquartered in Denmark, active in the construction materials industry, particularly manufacturing and commercializing mineral wool products. The Complainant has large international business operations, with over 45 manufacturing facilities in 39 countries and approximately 11,000 employees worldwide. According to the Complainant’s 2019 Annual Report, its revenues exceeded EUR 2.7 billion. The Complainant owns a large portfolio of trademarks protecting ROCKWOOL (both word, and device marks), including, amongst others, the following trademark registrations: Danish trademark registration VR193700254, registered on March 13, 1937, and International trademark registration 813306, registered on October 9, 2003, and designating, inter alia, the jurisdiction where the Respondent is headquartered, i.e., China. According to its website, the Respondent claims to be established in Guangdong Province, China, in 1998 and manufactures construction and isolation materials. It claims to be founded to explore the overseas markets and specializes in selling and marketing thermal and insulation products to foreign countries, either under its own brand or through Original Equipment Manufacturing (“OEM”). It claims to have operations in a number of countries. The disputed domain name was created on August 2, 2013, and it is linked to an active webpage containing information about the Respondent’s business operations and offering mineral wool products, shown as “ROCKWOOL” products, for sale, without the authorization of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant essentially contends that the disputed domain name is confusingly similar to its trademark for ROCKWOOL, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith. The Complainant claims that its trademarks are distinctive and used intensively, and submits several prior UDRP decisions which have recognized that the Complainant’s trademarks for ROCKWOOL are internationally recognized well-known trademarks, for instance Rockwool International A/S v. Siroc,WIPO Case No. D2007-1757; and Rockwool International A/S v. kaka toys,WIPO Case No. D2008-0015. The Complainant particularly submits that that there are no justifications for the use of its trademarks in the disputed domain name, and contends that the Respondent is a direct competitor, using the Complainant’s trademark in the disputed domain name to offer competing mineral wool products for sale on the Internet. The Complainant essentially contends that this does not confer any rights or legitimate interests in respect of the disputed domain name, and constitutes use in bad faith. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent essentially contends that none of the three elements required under the Policy for a complaint to succeed are fulfilled in this case. As to the first element, the Respondent essentially claims that the term “rockwool” is a generic and universally acknowledged name for a type of insulation material, and that it is also commonly used as a trade name and company name by various companies around the world. The Respondent also contends that the disputed domain name is made up of entirely descriptive elements: “rock” representing that the product is made from rock, “wool” representing that the product is formed by rock fiber/wool, and “insulation” representing the Respondent’s product scope. As to the second and third elements, the Respondent essentially contends that the disputed domain name was registered before the Complainant’s trademark rights were registered in China. Particularly the Respondent contends that the Complainant’s trademarks were registered on July 14, 2014, which is almost a year after the date of creation of the disputed domain name, i.e., August 2, 2013. Moreover, the Respondent claims that it has used the disputed domain name in good faith and undisturbed for approximately seven years, and that it has never acted in bad faith, tarnished the reputation of the Complainant, or misled or diverted consumers. The Respondent requests that the Complaint be dismissed, and that the Panel declares it to be an attempt by the Complainant to conduct reverse domain name hijacking. 6. Discussion and Findings The Policy requires the Complainant to prove three elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; Based on the evidence and arguments submitted, the Panel’s findings are as follows: A. Identical or Confusingly Similar The Panel finds that the Complainant has shown that it has valid rights in the sign ROCKWOOL based on its intensive use and registration of the same as a trademark in several jurisdictions commencing many years prior to the registration of the disputed domain name. Moreover, as to confusing similarity, the Panel finds that the disputed domain name consists of two components, namely, the Complainant’s registered trademark for ROCKWOOL, combined with the merely term “insulation”. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, states: “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 Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademark, which remains easily recognizable. The addition of the term “insulation” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. As to the Respondent’s argument that the Complainant’s trademark for ROCKWOOL is a generic and universally acknowledged name for a type of insulation material, the Panel does not agree with this argument. The Panel has conducted limited factual research into matters of public record (see WIPO Overview, section 4.8), and concludes from its searches in the Nice Classification of Goods and Services, that the standard generic term for the category of products marketed under the Complainant’s trademark appears to be “mineral wool”, in Nice Class 17, which is a term which the Respondent also uses on page 4 of its Response. Moreover, dictionary searches confirm this finding, and show that such insulation material is generally referred to as “mineral wool” or “stone wool”, but not as “rockwool” (see for instance www.merriam-webster.com/dictionary/mineral%20wool). Finally, it is noted that the Respondent did not provide evidence of any trademark revocation, invalidation or similar procedure or decision against the Complainant’s trademark based on its alleged generic nature (see in this regard also previous UDRP decisions such as Mubadala Trade Marks Holding Company, LLC, Al Yah Satellite Communications Company PrJSC, and Al Maisan Satellite Communications Company, LLC v. Emedia Development Ltd. and Whois Privacy Services Pty Ltd.WIPO Case No. D2013-0570). Accordingly, the Panel is unable to accept this contention and relies on the evidence of the prima facie validity of the trademarks submitted. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademarks, and that the Complainant has satisfied the requirements of the first element under the Policy. B. Rights or Legitimate Interests On the basis of the evidence and arguments submitted, the Panel accepts that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a good faith provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). The Respondent essentially contends in its Response that the disputed domain name was registered before the Complainant’s trademark rights were registered in China. Particularly, the Respondent contends that the Complainant’s trademarks were registered on July 14, 2014, which is almost a year after the date of creation of the disputed domain name, i.e.,August 2, 2013. The Respondent also relies on the fact that it has used the disputed domain name in good faith and undisturbed for approximately seven years. The Panel disagrees with the Respondent’s arguments. Given the global nature of the Internet and the Domain Name System, the Panel (and indeed the Respondent) needs to take all of the Complainant’s trademark registrations into consideration, including the following prior trademark registrations: Danish trademark registration VR193700254, registered on March 13, 1937, and International trademark registration 813306, registered on October 9, 2003, and designating, inter alia, China. Furthermore, while the Panel agrees that the Complaint was not filed immediately after the registration of the disputed domain name, the Panel notes that neither the Policy nor the Rules contain any deadline or statute of limitations for complaints. The Panel also refers to the WIPO Overview 3.0, section 4.17, which states: “Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. […] Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.” In rendering this decision, the Panel also has considered that the Complainant has been trading for over 70 years, including almost for 20 years in China. Finally, more importantly, upon review of the facts, the Panel notes that the disputed domain name directs to an active webpage, clearly displaying the Complainant’s well-known trademark ROCKWOOL on the home page, and in the product listings, without the authorization of the Complainant. The Panel accepts that this shows the Respondent’s intention to divert consumers for commercial gain to its website, by taking unfair advantage of the goodwill and reputation of the Complainant’s trademarks for ROCKWOOL. On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy. C. Registered and Used in Bad Faith The registration of the disputed domain name, which is confusingly similar to the Complainant’s internationally well-known trademarks, was clearly intended to mislead and divert consumers to the disputed domain name. The Panel notes that the Complainant’s trademarks for ROCKWOOL were already internationally well known on the date of creation of the disputed domain name, i.e., August 2, 2013, see for instance Rockwool International A/S v. Siroc,WIPO Case No. D2007-1757 and Rockwool International A/S v. kaka toys,WIPO Case No. D2008-0015. The Panel also notes that the Respondent, who is, according to its own statements, specialized in exporting insulation products to foreign countries and has clients all over the world, must have been aware of the Complainant’s internationally well-known trademarks. The Panel concludes that the registration of the disputed domain name, targeting the Complainant’s well-known trademark, was obtained in bad faith. As to use of the disputed domain name in bad faith by the Respondent, the website linked to the disputed domain name is currently used to sell and promote the Respondent’s products, which directly compete with the Complainant’s products. Such website clearly displays the Complainant’s well-known trademark ROCKWOOL on the home page and throughout the rest of the website, without the authorization of the Complainant. The Panel concludes that this means that the Respondent intentionally attracts Internet users for commercial gain to the disputed domain name, by creating consumer confusion between the disputed domain name and the Complainant’s trademarks (see paragraph 4(b)(iv) of the Policy). The Panel accepts that this is clear evidence that the Respondent is using the disputed domain name in bad faith. The Panel therefore finds that the Complainant has satisfied the requirements of the third element under the Policy. D. Reverse Domain Name Hijacking Noting that the Complainant has satisfied the three elements under paragraph 4(a) of the Policy and considering the overall circumstances, the Panel finds that the Complaint was not brought in bad faith and does not constitute an abuse of the administrative proceeding. 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 Deanna Wong Wai Man
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Sole Panelist
Date: October 8, 2020
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