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Rockwool International A/S v. Ismail Tokoglu [2005] GENDND 756 (27 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rockwool International A/S v. Ismail Tokoglu

Case No. D2005-0358

1. The Parties

The Complainant is Rockwool International A/S, of Hedehusene, Denmark, represented by Zacco Denmark A/S, Denmark.

The Respondent is Ismail Tokoglu, of Turkey.

2. The Domain Name and Registrar

The disputed domain name <rockwoolturk.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2005. On April 8 and 11, 2005, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On April 12, 2005, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 14, 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 April 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2005.

The Center appointed Leon Trakman as the sole panelist in this matter on May 24, 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.

4. Factual Background

The Complainant, Rockwool International, was founded in 1909. The Group currently has a turnover of DKK 7.9 billion and employs in excess of 7,000 employees. The Group operates 22 factories in 14 countries in Europe, North America and Asia and has a world-wide network of sales offices, distributors and partners. The Group headquarters and environmental departments are based in Hedehusene, near Copenhagen. The Complainant is a leading producer of stone wool materials directed at alleviating environmental problems, such as in relation to acid rain.

The Complainant has provided information verifying its trademark registrations, including a copy of its Certificate of International Registration and its trademark registration certificate in Turkey, number 2001/09/252, dated May 18, 2001.

According to the WHOIS section at networksolutions.com the Respondent in this administrative proceeding is Ismail Tokoglu. Other than Respondent’s email address, however, no further information is available through WHOIS.

The disputed domain name, <rockwoolturk.com>, was registered on June 12, 2003.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name includes the entire trademark of the Complainant, with the addition of the phrase “turk”. Complainant argues that the use of this phrase must be taken as referring to the Respondent’s country, Turkey, that this does not “take the domain name out of the scope of the protection of the Complainant’s registered trademark rights”, and that there is “significant risk that the customers of the Complainant would be misled into believing that the disputed domain belongs to the Complainant or the Complainant’s subsidiary, or that the domain name has been registered with the prior consent of the Complainant.”

Complainant provides evidence that the Respondent is actively using Complainant’s trademark to market identical products. Complainant contends that “[t]his fact undoubtedly increases the risk of confusion among the customers significantly.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name <rockwoolturk.com> is confusingly similar to the Complainant’s trademark, ROCKWOOL. The name is identical in all respects other than the addition of the phrase “turk” to “rockwool.”

It is reasonable to infer that online users would reasonably confuse the disputed domain name with Complainant’s trademark. It is equally reasonable to infer that such users would suppose that “turk” refers to rockwool products or services provided in Turkey.

Such confusion is accentuated by the fact that a search of the word “rockwool” on the WEB identifies the disputed domain name, given that the name is identical to Complainant’s trademark in every respect other than the addition of the phrase “turk.”

B. Rights or Legitimate Interests

The Respondent has no rights to or legitimate interests in the disputed domain name. While failing to reply to Complainant’s contentions does not, in and of itself, infer that Respondent’s interests are per se illegitimate, that failure coupled with the confusingly similar name, as well as use of that name to sell identical products to those of the Complainant constitutes reasonable evidence that Respondent interests are not legitimate and do not constitute rights.

That Respondent’s interests are not legitimate is also supported by the absence of any registered address, contact information, or other reasonable means by which to identify the interests of the Respondent other than Respondent’s email address. While the absence of such information does not conclusively establish that the domain name serves an illegitimate interest, it strongly so infers. That illegitimacy is further attested to by evidence of the bad faith use of that disputed domain name.

C. Registered and Used in Bad Faith

The Respondent is using the disputed domain name in bad faith. Respondent is undoubtedly aware of Complainant’s trademark for two related reasons: Respondent is using a confusingly similar domain name, and is doing so explicitly in order to sell identical products online to those sold by Complainant.

There can be no reasonable doubt that, by these means, Respondents intends in bad faith to mislead actual or prospective customers of Complainant into believing that the Respondent, for all intents and purposes, is the Complainant in Turkey. It is equally reasonable to infer that Respondent intends to induce such customers to buy products from it, as distinct from Complainant.

The Panel concludes that, by virtue of these several inferences, Respondent intends to take advantage in bad faith of Complainant’s trademark for the purpose of profiting at Complainant’s expense.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <rockwoolturk.com> , be transferred to the Complainant.

Leon Trakman
Sole Panelist

Date: May 27, 2005