The Complainant is Rockwool International A/S, Denmark, represented by Beijing AnJie Law Firm, China.
The Respondent is Rose, Rosewool Insulation Refractory 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 Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2020. The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on September 23, 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 stone 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, in 2019, its revenues exceeded EUR 2.7 billion. The Complainant owns a large portfolio of trademarks protecting ROCKWOOL (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 Respondent’s home jurisdiction China. The disputed domain name was created on November 29, 2017, and the Complainant provides evidence that it is linked to an active webpage, leading to a website offering ROSEWOOL-branded stone wool 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 use of the disputed domain name and its trademarks to offer competing stone wool products 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 did not reply to the Complainant’s contentions. 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; (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. 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, incidentally commencing many years prior to the registration of the disputed domain name. Moreover, as to confusing similarity, the disputed domain name consists of two components, namely, the Complainant’s registered trademark for ROCKWOOL, combined with the country name “Malaysia”. 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 geographical term “Malaysia” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. See WIPO Overview 3.0, section 1.8, stating: “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”. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, 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 holds 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). However, no evidence or arguments have been submitted by the Respondent in reply. Moreover, 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 in very large font on the home page, and offering competing ROSEWOOL-branded stone wool products for sale, without the authorization of the Complainant. 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. Furthermore, the Panel notes that the nature of the disputed domain name, being confusingly similar to the Complainant’s trademarks, and containing the Complainant’s registered trademark combined with a geographical term, carries a high risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1). 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. Given the distinctiveness and fame of the Complainant’s trademark, the Panel holds that the registration of the disputed domain name, targeting the Complainant’s well-known trademark, was obtained in bad faith. Moreover, even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant already owned registered trademarks in ROCKWOOL and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain name. The Panel also finds that the addition of the geographical term “Malaysia” reinforces the impression of an affiliation between the disputed domain name and the Complainant (see in this regard also prior UDRP decisions such as Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755). 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 ROSEWOOL-branded products which directly compete with the Complainant’s products, while clearly displaying the Complainant’s well-known trademark ROCKWOOL in very large font 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. The Panel accepts that this is clear evidence that the Respondent is using the disputed domain name in bad faith. Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 Deanna Wong Wai Man
Sole Panelist
Date: September 30, 2020
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