The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
The Respondent is Stephen Batchelder of California, United States of America (the “US”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2011. On December 13, 2011, the Center transmitted by email GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC 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 December 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2012.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on January 31, 2012. 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 controls the manufacturer of roof windows and accessories, the VELUX Group, as well as the VELUX trademark.
Since 1941 the Complainant has carried on its business as a designer and manufacturer of VELUX roof windows and other products, maintaining presence in some 40 countries throughout the world, and selling in approximately 90 countries.
The VELUX Group intensively markets VELUX roof windows and incurs substantial marketing costs associated with such marketing in numerous countries, including the US. The VELUX Group directs its marketing effort towards professional users, including their advisers and dealers in building materials, as well as towards end users, including home owners. The Complainant's marketing activities include the distribution of product catalogues, advertising, television commercials and sponsorship, such as the VELUX 5 Oceans, which is a single-handed yacht race across the 5 oceans of the world.
The disputed domain name was registered in April 15, 2011.
The Panel accessed the website displayed at the disputed domain name on February 13, 2012. There was a pay per click page with several sponsored links to websites where VELUX and competing products were being offer for sale. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) The Complainant is the owner of several trademarks/applications composed by the word "velux" in European Union, US and numerous other countries. The Complainant's trademarks are used in relation to the manufacture and sale of roof windows and blinds. Those marks are not descriptive of the designated goods for which they are registered. The distinctive element of the disputed domain name is the first part “velux”, which is identical to the Complainant’s well-known VELUX trade mark and name. The suffixes “suntunnel” and “skylight” are generic terms usually used for the main products sold by the Complainant, and these terms cause a link to the Complainant’s business rather than distinguish the Respondent’s business to a sufficient extent. As a result, the diputed domain name is confusingly similar to the Complainant's trademarks, in which it has established rights.
(ii) The disputed domain name was registered by the Respondent on April 15, 2011, without the Complainant’s knowledge or permission. The Respondent is using the disputed domain name to park sponsored links to websites that offer the Complainant’s products as well as competing products for sale. Moreover, the Respondent is not part of the Complainant’s dealer network nor is he an authorized installer. Also, the distinctive element of the disputed domain name is the word “velux” which is identical to the Complainant’s registered trademark “velux” in which the Complainant has extensive rights, reputation, and goodwill. The Complainant believes that the Complainant’s trademarks were well-known to the Respondent long before the registration of the disputed domain name and that the Respondent was well aware of those trademarks at the time of registration of the disputed domain name, especially given the selection of suffixes chosen by the Respondent as these are related to the products of the Complainant (i.e. “suntunnel” and “skylight”). The word “velux” in combination with the suffixes “suntunnel” and/or “skylight” is likely to be used by consumers searching for information about the Complainant’s products. Even when the Complainant sent a cease-and-desist letter right after the disputed domain name registration, the Respondent did not react. The Complainant can see no legitimate or fair use of the disputed domain name. The Respondent’s purpose of using the word “velux” in the disputed domain name is to attract customers to its website and generate revenue for the Respondent. 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.
(iii) The Respondent intentionally attempts to attract, for commercial gain, Internet users to the website which resolves from the disputed domain name. This is 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, whom is not only promoting VELUX products on the website but also products from the Complainant’s competitors. Additionally, it is foreseeable that potential customers of the Complainant may visit the disputed domain name and be led to believe that the Respondent is a dealer of VELUX products as part of the VELUX dealer network and/or an installer authorized by the Complainant even though, in reality, the Respondent is unknown to the VELUX dealer network-organization and the Respondent is promoting competing products by making reference to the VELUX trademark. This is likely to cause damage to the Complainant as a result of reduced Internet traffic to its own website and, ultimately, lost sales, and thereby a disruption of the Complainant’s business. Facing the lack of response from the Respondent, it could also be inferred that the Respondent disrupts the Complainant’s business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel has no doubt that VELUX is a trademark directly connected with the Complainant’s activities in the business of manufacturing and selling roof windows and blinds.
Annex D to the Complaint shows registrations of the VELUX trademark in the European Union, the US and several other countries.
The trademark VELUX is wholly encompassed within the disputed domain name, which also includes the expression "suntunnelskylight".
In a previous UDRP case, concerning the domain names and , the panel stressed that “[...] it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question.” (F. Hoffmann-La Roche AG v. sysadmin admin, ltd.,WIPO Case No. D2008-0954).
The suffixes “suntunnel” and “skylight” are generic terms commonly used to describe products sold by the Complainant and its competitors, and these terms cause a link to the Complainant’s business rather than distinguish the disputed domain name.
Therefore, the Panel concludes that the addition of “suntunnelskylight” is not sufficient to refute the confusing similarity between the disputed domain name and the Complainant’s trademark, required under paragraph 4(a)(i) of the Policy.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is 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 at issue.
Based on the Respondents’ default and on the prima facie evidence provided in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the use of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
The Respondent is not making a noncommercial or fair use of the disputed domain name, which is being presently used to host a pay per click website with links to some of the Complaninant's competitors in the field of roof windows and blinds.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
In the present case, the Panel clearly concludes that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with the Complainant’s mark as to the source of its services.
When the disputed domain name was registered the Complainant’s trademark VELUX was already internationally recognized in the field of roof windows and blinds. Therefore, it is unlikely that the Respondent could has been unaware of the Complainant’s reputation and business.
Besides that, the contents of the website at the disputed domain name may prove the Respondent's awareness of the Complainant's trademark and services.
Moreover, the unauthorized use of the disputed domain name to sell VELUX products makes clear that the adoption of the expression “veluxsuntunnelskylight" to compose the disputed domain name was not a coincidence.
Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) potentially obtains revenues from this practice; and
(iii) deprives the Complainant from directly selling its original products to prospective clients.
This conclusion is emphasized by the Respondent's non-collaborative behavior in this case and when received the cease-and-desist letter.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of 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 be transferred to the Complainant.
Rodrigo Azevedo
Sole Panelist
Dated: February 13, 2012
Full & Egal Universal Law Academy