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Rockwool International A/S v. Fammari Fammari [2005] GENDND 1966 (7 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rockwool International A/S v. Fammari Fammari

Case No. D2005-0977

1. The Parties

The Complainant is Rockwool International of Hedehusene, Denmark, represented by Zacco Denmark A/S, Hellerup, Denmark (the “Complainant”).

The Respondent is Fammari Fammari of Amman, Jordan (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name <internationalrockwool.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2005. On September 13, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 14, 2005, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 23, 2005. 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”), 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 September 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2005. No Response was filed and the Center issued a Notification of Respondent Default on October 18, 2005.

The Center appointed Dr. Zoltàn Takàcs as the Sole Panelist in this matter on October 25, 2005. 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.

The language of the proceeding is English, that being the language of the registration agreement.

4. Factual Background

The Rockwool Group, of which the Complainant is part of, is the world’s leading manufacturer of stone wool. Today, the Rockwool Group operates twenty-two factories in fourteen countries in Europe, North America and Asia and has a worldwide network of sales offices, distributors and partners. The Rockwool Group headquarters is based in Hedehusene near Copenhagen, which is also the seat of the Complainant.

The Complainant owns a number of trademark registrations for the mark “ROCKWOOL” throughout the world, including, but not limited to, the International Trademark Registration No. 813.306 registered on October 9, 2003. The basic registration of the international trademark is the Danish Trademark Registration No. 1937 00254 with the priority of March 13, 1937. These registrations protect various goods of classes 17 and 19 under common classification of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Mark, such as insulants of mineral wool and mineral wool made building materials.

The disputed domain name was created on May 24, 2005.

The Complaint was filed on and received by the Center on September 13, 2005, immediately prior to which the Registrar’s own Whois database listed Faisal Ammari as Registrant and administrative contact of the domain name <internationalrockwool.com>, (Per Whois printout of September 9, 2005). However, during the Complaint verification phase, the Whois database of the Registrar listed Fammari Fammari as Registrant of the domain name at issue, with Faisal Ammari being the administrative contact person (Per Whois printout of September 23, 2005). Both printouts indicated that the disputed domain name <internationalrockwool.com> was for sale.

After commencement of the proceedings, the domain name <internationalrockwool.com> pointed to a website parked by the Registrar, at which site sponsored links included titles like: “Insulation – search for insulation online”, “Building Insulation”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name <internationalrockwool.com> is confusingly similar to its “ROCKWOOL” trademark, since the only differing word element in the domain name −“international”− does not have a distinctive character.

The Complainant asserts that to the best of its knowledge, the Respondent has no rights or legitimate interest in the disputed domain name.

The Complainant further alleges that the domain name <internationalrockwool.com> has been registered and used in bad faith. The Complainant assumes that it was unlikely that the Respondent was unaware of the rights it had in the worldwide known “ROCKWOOL” mark, also forming its company name. According to the Complainant, by registering the domain name at issue, the Respondent disrupts its business and has registered it for commercial gain, having offered it for sale. Though the Complainant offered the Registrant US$200 for the domain name, the Respondent did not reply.

The Complainant requests that the domain name <internationalrockwool.com> be transferred to the Complainant.

B. Respondent

The deadline for filing a response by the Respondent was October 16, 2005, and the Respondent defaulted.

Then on October 20, 2005, the Center received an email from Faisal Ammari, with the following content:

“Hi, actually this is the first time dealing with such dispute (domain names), I have no idea how to proceed, domain name: <internationalrockwool.com> was registered because we have a company called internationalrockwool here in jordan (exact naming), I didn’t purchase this domain name to immetate nor copy any ideas, naming from other company. Please advise what is required from my side. Thanks.”

On October 21, 2005, the Center sent to the Faisal Ammari a notice that he was in default, and that the Center already started appointing the Administrative Panel.

In his October 24, 2005 email sent to the Center, Faisal Ammari said:

“Hi, following paragraph number 6 of the complaint please find below my response: (We refuse to transfer the domain to complainant as a remedy) Thanks.”

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel “to decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, these rules and any rules and principles of law that it deems applicable”.

It has been a consensus view in the WIPO UDRP Panel Decisions (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, par. 4.5, “http://arbiter.wipo.int/domains/search/overview/index.html”) that when reaching the decision, the panel may undertake limited factual research into matters of public records if it feels that it needs that assistance in reaching a decision. To this end this Panel performed a limited scope search at the Google search engine to find out to which information and sources points to the “ROCKWOOL” trademark and the combination of words of which the disputed domain name is made out (“international rockwool”), all that in connection with all three elements of the Policy.

A. Identical or Confusingly Similar

It is apparent, and the Panel finds it sufficiently proven, that the Complainant owns a number of “ROCKWOOL” trademark registrations throughout the world. However, since the domain name at issue, <internationalrockwool.com>, is not identical to the Complainant’s “ROCKWOOL” trademark, in order that the requirement under paragraph 4(a)(i) of the Policy is satisfied, it is necessary that the disputed domain name be confusingly similar to the mark in which the Complainant has trademark rights. The Panel finds this is the case here.

The domain name <internationalrockwool.com> wholly incorporates the Complainant’s distinctive trademark “ROCKWOOL”. The Panel is of the view that the mere addition of a non-distinctive element such as “international” in this case does not render the domain name at issue distinct enough from the “ROCKWOOL” trademark of the Complainant, which is recognized in many countries of the world. The Panel finds that the disputed domain name <internationalrockwool.com> is confusingly similar to the “ROCKWOOL” trademark of the Complainant, and thus element (i) of the Policy’s paragraph 4(a) is satisfied.

B. Rights or Legitimate Interests

It has been a consensus view in the WIPO UDRP Panel Decisions (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, par. 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html”) that once the Complainant makes out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of proof to demonstrate rights or legitimate interests in the domain name shifts to the respondent.

It has been undisputed that the Complainant never authorized the Respondent to use its “ROCKWOOL” trademark in any way.

Under paragraph 4(c) of the Policy, respondents may demonstrate their rights and interests to the disputed domain name by showing any of the following circumstances in particular but without limitation:

(i) their use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or

(ii) they (as individuals, businesses, or other organizations) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights, or

(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel does not consider the Respondent’s unsubstantiated declaration to the Center that “they” have a company called internationalrockwool in Jordan as amounting to a showing of any rights in the disputed domain name. The Respondent did not come forward with any information that might indicate his meeting any of the circumstances set for in paragraph 4(c) of the Policy, or any other circumstances that could indicate his rights or legitimate interests in the domain name at issue. Therefore the Panel finds that the second element of the Policy is made out.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, to succeed in UDRP cases, complainants are required to prove that the domain name has been registered and is being used in bad faith.

The evidence and documents produced by the Complainant and its own limited scope discovery convince the Panel that the domain name has been registered and is being used in bad faith, for the following reasons.

The Panel searched the Google engine upon the words “ROCKWOOL” and the combination of words of which the disputed domain name is made out (“international rockwool”) and all first twenty hits of both searches pointed to websites owned either by the parent Rockwool Group or one of its affiliations world wide.

The Respondent in his short notice sent to the Center claimed that he registered the name for a company called international rockwool incorporated in Jordan. The Panel did not find any evidence or information in support of this allegation, and what is more, it found it inconsistent. Were there such a named company in the jurisdiction of the Respondent, nothing would speak in favor or registering the name and then immediately offering it for sale. Moreover, the Respondent parked the name on the Registrar website, at which sponsored links pointed to undertakings doing business in relation to goods identical to those of the Complainant.

In the eyes of this Panel these circumstances sufficiently indicate the Respondent’s intent to disrupt the business of the Complainant by registering the disputed domain name (paragraph 4(b)(iii) of the Policy) and also his attempt to attract for commercial gain Internet users to an on-line location by creating likelihood of confusion as to the source, sponsorship or affiliation with the Complainant’s trademark (paragraph 4(b)(iv) of the Policy).

In addition, circumstances regarding the Respondent’s using of false Whois data bolster a finding of bad faith. Though the initial record listed Faisal Ammari as the Registrant of the disputed domain name-the same person who sent notices to the Center and who in fact declined to voluntarily transfer the disputed domain name to the Complainant - in the complaint verification process the Registrar identified the Respondent as Fammari Fammari, which is obviously a made-up name. It is a widely accepted view, not only of WIPO UDRP Panels, that much of the false Whois data is used to avoid accountability for unlawful conduct. This Panel considers the Respondent’s use of false information in the Whois record as further indicative of his bad faith conduct.

7. Decision

For all the foregoing reasons, the Panel decides:

(a) that the domain name <internationalrockwool.com> is confusingly similar to the trademark to which the Complainant has rights, and

(b) that the Respondent has no rights or legitimate interests in respect of the domain name, and

(c) that the domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <internationalrockwool.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist

Dated: November 7, 2005