The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Hewitsons LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Pakpum Thonorn of Chiangmai, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2010. On November 23, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On November, 23, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 November 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2010.
The Center appointed Eduardo Machado as the sole panelist in this matter on December 28, 2010. 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 company incorporated under the laws of Denmark and is the owner of the worldwide manufacturer of roof windows and accessories, the Velux Group, as well as the trade mark VELUX.
The Complainant has since 1941 continuously carried on business as a designer, manufacturer and importer of its VELUX roof windows and other products. The Complainant has a presence in some 40 countries throughout the world, and sells in approximately 90 countries.
The Complaint is based on the Complainant's trade marks incorporating the word “velux”, registered in the European Union, United States of America (“United States”) and numerous other countries. The Complainant has extensive rights in the VELUX brand. The trade mark VELUX was first registered as a trade mark in Denmark in 1942.
The Complainant provides printouts from the website of the Office Harmonization for the Internal Market and the United States Patent and Trademark Office, showing that the Complainant is the owner of the marks set out below:
1. VELUX (Community trade mark No. 651869, registered since July 16, 2004);
2. VELUX (United States trade mark No. 1492904, registered since June 21, 1988).
The disputed domain name was registered on March 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant argues that the distinctive element of the disputed domain name is the Complainant's well-known VELUX trade mark and name. The Complainant further argues that the prefix "world" and the suffix "blind" are generic and do not sufficiently distinguish the disputed domain name from the Complainant’s marks. As a result, the disputed domain name is confusingly similar to the Complainant's trade marks, in which it has established rights.
The Complainant demonstrates in its Complaint that the disputed domain name leads to a website presented as a blog entitled "velux blinds" but containing posts on a variety of subjects. Among these, there are posts which make direct reference to competitors of the Complainant.
The Complainant informs that he first contacted the Respondent by email on September 9, 2010, informing him of the grounds for complaint and requesting transfer of the disputed domain name. No reply was received, prompting the Complainant to send a reminder on October 25, 2010. The Complainant did not receive any reply to either of the pieces of correspondence.
Before the Complainant gave notice to the Respondent of the dispute, there is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed Domain Name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. As stated above, the disputed domain name is presented as a blog and used for the display of sponsored links. It should be noted that many of the blog posts found on the disputed domain name are almost entirely incomprehensible, despite apparently being written in English. This suggests that it is not a genuine blog but merely a façade, the true purpose of the disputed domain name being to generate passive income for the Respondent and/or disrupt the Complainant's business.
The Respondent does not appear to have ever intended to use the disputed domain name in connection with a genuine business. Further, the distinctive element of the disputed domain name is the word “velux”, in which the Complainant has extensive rights, reputation and goodwill. The Respondent is therefore clearly not commonly known by the disputed Domain Name.
The Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The purpose of sponsored links, such as those found on the website which resolves from the disputed Domain Name, is to generate revenue for the registrant. It can therefore be inferred that these links will generate revenue for the Respondent on a pay-per-click basis and/or reduce the Respondent's hosting fees.
Accordingly, the Respondent's use of the disputed domain name is clearly commercial. The Respondent therefore has no rights or legitimate interests in respect of the disputed Domain Name.
The Complainant submits that, by using the disputed domain name in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the website which resolves from the disputed domain name. This was achieved by creating a likelihood of confusion with the Complainant's marks and effectively hijacking part of the Complainant's natural traffic in order to generate additional revenue for the Respondent through the sponsored links found on the disputed domain name's parking page.
No other basis for the Respondent's selection of the highly distinctive VELUX trade mark in the disputed domain name can be inferred under the circumstances in the record, except that the Respondent sought to attract Internet users for commercial gain to his site by means of initial confusion. The Complainant refers to the administrative panel's decisions in VKR Holding A/S v. Keyword Marketing, Inc.,WIPO Case No. D2008-0014 and VKR Holding A/S v. Jeff Cyril,WIPO Case No. D2009-0939.
Additionally, the Complainant contends that it is foreseeable that potential customers of the Complainant may visit the disputed domain name and end up clicking either on the sponsored links or on the links which lead directly to competitors of the Complainant. This is likely to cause damage to the Complainant as a result of reduced Internet traffic to its own websites and, ultimately, lost sales, and is therefore disruptive of the Complainant's business. Further, it may be inferred that the Respondent disrupted the Complainant’s business in the manner described above in the hope that it might induce the Complainant to offer a
ransom for the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith, Policy, paragraph 4(a). A. Identical or Confusingly Similar
The Panel finds that Complainant’s registered trademarks are distinctive in its field of activity and have reached strong reputation and notoriety in many countries. The Panel finds that the disputed domain name is confusingly similar with Complainant’s VELUX registered trade marks. The only difference between Complainant’s registered trade marks and the disputed domain name is the addition of the generic terms “world” and “blind”, which are terms that can refer to the Complainant’s activities and are merely descriptive.
The Panel finds that the difference pointed above is not enough to characterize the disputed domain name as being distinct from the Complainant’s registered trade marks. See, Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd. (WIPO March 10, 2008) (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).
The Panel finds that this similarity is likely to increase the possibility of confusion and mislead Internet users who search for Complainant’s services and divert them to the domain names at issue.
The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Taking into consideration that the Respondent has failed to respond to the Complaint, the Panel will analyze the facts and circumstances brought by the Complainant to verify if the Respondent lacks rights and legitimates interests in the disputed domain name.
As a matter of a fact, the Complainant has made a prima facie case in support of its allegations and, due to this, the burden shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and has not used the disputed domain name, or a name corresponding to it, in connection with a bona fide offering of goods or services.
At the time the UDRP Complaint was filed and at the time this decision was rendered, the disputed domain name was associated with a website that displayed a blog structure and pay-per-click advertisements of third parties, including competitors of the Complainant. The Panel finds that this is not a bona fide offering of goods and services.
Thus, in view of the above, the Panel finds that the Complainant has established the second condition of the paragraph 4(a) of the policy. C. Registered and Used in Bad Faith
Under paragraph 4(b), a respondent has registered and used a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the domain name in bad faith.
Respondent seems to have intentionally registered the disputed domain name which totally reproduces the Complainant’s well-know trademark VELUX. By the time the disputed domain name was registered, it is highly unlikely that the Respondent would have been unaware of the Complainant’s pre-existing rights on its trade mark VELUX when registering the disputed domain name.
The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its VELUX registered trade mark when the disputed domain name was registered. Moreover, the Complainant submitted evidence that its trade mark is well-known. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark when he registered the disputed domain name.
The Respondent used the Complainant’s well-known trade mark to attract users to the Respondent’s website that displayed a blog structure and pay-per-click advertisements of third parties, including competitors of the Complainant.
As pointed by the Complainant, the disputed domain name is presented as a blog and used for the display of sponsored links. The Panel finds that many of the blog posts found on the website at the disputed domain name are almost entirely incomprehensible, despite apparently being written in English, which suggests that it is not a genuine blog but merely a façade, the true purpose of the dispute domain name being to generate Internet traffic to the Respondent’s website.
This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
In light of these facts, the Panel finds that the Complainant has established the third element of the Paragraph 4(a) of the Policy. 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 disputed domain name, be transferred to the Complainant .
Eduardo Machado
Sole Panelist
Dated: January 11, 2011
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