WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION VKR Holding A/S v. Jeff Cyril Case No. D2009-0939 1. The Parties
The Complainant is VKR Holding A/S of Horsholm, Denmark, represented internally.
The Respondent is Jeff Cyril of Westminister, California, United States of America. 2. The Domain Name and Registrar
The disputed domain names , , , , are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2009. On July 14, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On July 15, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2009 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 July 17, 2009. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 11, 2009.
The Center appointed Jane Lambert as the sole panelist in this matter on August 14, 2009. 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.
On August 14, 2009, the Center received the following email from the Respondent:
“Dear Mary Mutoro,
I have been getting the emails what am I supposed to do? I am a Velux dealer and Installer certified by Velux. Do they want to buy the names? What is there (sic) goal?
Regards,
Jeff W. Cyril
Cell 7 [………….]
Fax 7 [………….]
SKYLIGHTS PLUS INC.
Velux 5-Star Dealer and Installer.”
The Center forwarded the Respondent's email to the Panel immediately and asked her for directions. Fearing that the papers might have come to the Respondent's attention too late for him to respond or to seek legal advice and anticipating a possible defense but at the same time wishing to be fair to the Complainant and anxious to avoid undue delay, the Panel decided to offer the Respondent an opportunity to explain why he had not filed a Response in time and to request permission to respond out of time if he so wished.
Accordingly, on August 17, 2009, the Panel
- directed the Center to write to the Respondent referring him to the Complaint and reminding him that this is a dispute resolution procedure to determine who should hold the disputed domain names subject only to the agreement of the parties or a decision of the competent court; and
- issued a Procedural Order in the following terms:
“1. The Respondent is invited to file a witness statement electronically (by email to domain.diputes@) copying Complainant in accordance with the Rules, paragraph 2(h), within 7 days of the date of the Order stating reasons why he has not filed a response and indicate to Panel whether he requires leave to file a Response out of time;
2. Further the Complainant will be given an opportunity to file a response within 5 days from date of receipt of Respondent's supplemental submissions;
3. The Panel's projected decision date is extended accordingly to 7 days from receipt of Respondent's Response, or to 7 days from Respondent's default, should a Response not be submitted.”
The Respondent did not take advantage of either opportunity. 4. Factual Background
The Complainant is the ultimate holding company of the Velux group of companies (“the Velux Group”). The Velux Group develops, manufactures and markets windows including, in particular, roof windows and accessories for such windows. With manufacturing companies in more than 10 countries and sales companies in more than 50 employing 15,600 persons in 2008 the Velux Group is regarded as the market leader in roof windows.
The Complainant has registered the word VELUX as a trademark in a number of countries, including the United States where that sign has been registered for goods in classes 6, 19 and 20 under registration number 1,492,904 since December 3, 1986.
By virtue of its sales, marketing and sponsorship of sailing the Complainant has acquired goodwill and reputation in the VELUX mark in relation to roof windows in the United States and elsewhere. Dealers and consumers in the United States and elsewhere associate the sign VELUX with the Complainant and none other.
The Respondent has parked each of the disputed domain names on what are described as free parking sites maintained by the registrar GoD. Each of those pages contains a number of sponsored links some of which lead to sites of the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant claims the transfer of the disputed domain names on the grounds that:
(1) Each and every one of the disputed domain names is confusingly similar to its above-mentioned United States registered trademark and the sign VELUX in respect of which the Complainant enjoys goodwill and a reputation in relation to roof windows and accessories in the United States and elsewhere;
(2) The Respondent has no rights or legitimate interests in relation to the disputed domain names; and
(3) The Respondent has registered and used the domain names in bad faith in that he has used them to divert traffic to competing sites. B. Respondent
The Respondent did not reply to the Complainant's contentions.
However, in his email of August 14, 2009 quoted above he stated he was “a Velux dealer and Installer certified by Velux” which might have given rise to a defense of express or implied license, acquiescence or estoppel or even an independent claim to the VELUX mark. That was the possible defense that the Panel had in mind when she made the procedural order. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that each of the following elements is present:
(i) Each disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of each domain name; and
(iii) Each domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The distinctive element of each of the disputed domain names are the letters VELUX and those letters are identical to United States registered trademark number 1,492,904.
Accordingly, the Panel holds that the first element is present. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you 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.”
There is no evidence that any of the above circumstances apply. Nor is there any other evidence that the Respondent has rights or legitimate interests in any of the disputed domain names.
Accordingly, the Panel finds that the second element is present. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy entitles a Panel to find that a domain name has been registered and used in bad faith in any of the following circumstances:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Members of the public from English speaking countries and possibly elsewhere who wish to buy, install or repair VELUX windows may stumble onto the pages where the disputed domain names are parked, confused by the similarity of those domain names with the VELUX mark. Once there they will be tempted to follow the sponsored links at least some of which will lead to the Complainant's competitors. By using such pages, the Respondent may save himself hosting fees that he might otherwise have to pay. The reason he would be spared such fees may be that a charge is made for the sponsored links.
Thus, all the integers of paragraph 4(b)(iv) are satisfied, namely:
(1) The domain names have been used to attract Internet users to a web site or other on-line location;
(2) The Respondent has permitted the posting of sponsored links which constitute “commercial gain”;
(3) A likelihood of confusion with the Complainant's mark is created as to the source, sponsorship, affiliation, or endorsement of the on-line location.
That is enough for a finding of registration and use in bad faith but it is obvious that the Complainant's business may be affected because it will enjoy less traffic to its site and ultimately fewer sales. Accordingly, the Panel finds that 4(b)(iii) is satisfied too.
Further, it may be inferred that the Respondent disrupted the Complainant's business in the hope that it might induce the Complainant to offer a ransom for the disputed domain names. Consequently, paragraph 4(b)(i) is satisfied.
The Panel therefore finds that the third element is present. 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 names , , , and be transferred to the Complainant.
Jane Lambert
Sole Panelist
Dated: September 1, 2009
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