The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
The Respondent is cui jian jun of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 8, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the amended Complaints on July 12, 2016 and July 13, 2016 respectively.
On July 11, 2016, the Center sent an email communication in both Chinese and English to the parties regarding the language of the proceeding. On July 12, 2016, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified the Respondent in both Chinese and English of the Complaint, and the proceedings commenced on July 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2016.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on August 17, 2016. 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, incorporated and registered under the laws of Denmark, is a worldwide manufacturer of roof windows and accessories. The Complainant is the owner of the Velux Group. The Complainant is the owner of the mark VELUX. The Complainant has a presence in over 40 countries and sells its products in approximately 90 countries. Since 1993, the Complainant has continuously carried out its business of being a designer, manufacturer and importer into China, where the Respondent is located, of its Velux-branded roof windows and other products, including sun tunnels, blinds and solar hot water systems.
The Complainant is the owner of 450 trademark registrations for the VELUX mark or VELUX-formative marks. Among those registrations are the following in China: (1) Registration No. 11915484 for the mark VELUX, registered on June 14, 2014; (2) Registration No. 11227003, for the mark VELUX, registered on December 14, 2013; and (3) Registration No. 350160, for the mark VELUX (stylized), registered on May 30, 1989. The Complainant owns 20 other trademark registrations in China. Its VELUX trademarks are registered throughout the world, including in Australia, Argentina, Benelux, Bolivia, Brazil, Canada, Chile, Colombia, Cuba, Denmark, the European Union, Georgia, Hong Kong, China, Hungary, Iceland, India, Indonesia, Israel, Japan, Lebanon, Lithuania, Malaysia, Mexico, Namibia, New Zealand, Norway, Peru, the Philippines, the Republic of Korea, the Russian Federation, Singapore, Slovakia, Slovenia, South Africa, Switzerland, Taiwan Province of China, Thailand, Turkey, Ukraine, the United States of America, Venezuela, and Viet Nam, among other jurisdictions.
The Respondent registered the disputed domain name on January 10, 2016. At the time the Complaint was filed, the disputed domain name resolved to a website featuring pictures and videos of nude women and otherwise of a sexual nature. At the time of this decision, the disputed domain name does not resolve to a website. 5. Parties’ Contentions A. Complainant
The Complainant’s products have been advertised and sold in China since 1993 on an increasingly extensive scale. The Complainant spends over EUR 8 million on its marketing efforts each year and in 2014 the Velux Group spent over EUR 2.7 million on the purchase of Google AdWords. As a result of the scale and extent of the Complainant’s advertising, its VELUX trademarks have become household names and are recognized by contractors in China, among others, as indicating the Complainant’s companies or its goods and services. The Complainant also promotes its name and reputation through sponsorship of events, including international sports events. It is the title sponsor of the premium club handball tournament in Europe, the VELUX EHF Champions League, which runs from September to May or June each year and is played by 24 of the top teams in Europe. The Complainant also sponsors the VELUX 5 Oceans Race, a single-handed yacht race around the world. Thus, the Complainant has established an extensive and valuable public reputation and goodwill in the Complainant’s trademarks.
The disputed domain name is identical or confusingly similar to the Complainant’s VELUX marks. The disputed domain name incorporates the Complainant’s VELUX word mark with the letters “bj”. The addition of “bj” to the VELUX mark in the disputed domain name does not reduce the confusing similarity with the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent registered the disputed domain name on January 10, 2016 without the knowledge or consent of the Complainant. The disputed domain name points to a website containing pictures and videos with sexual content. The only distinctive element of the disputed domain name is “velux”, which is a term invented by the Complainant and is not in any way descriptive. The Respondent must have been well aware of the Complainant and its rights in the VELUX trademarks before the Respondent registered the disputed domain name. Therefore, the Respondent did not register the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the disputed domain name. Finally, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. It is being used to commercially advertise and promote videos and pictures of nude women. Such unauthorized use cannot be considered fair use. Additionally, the disputed domain name is not being used in tribute or criticism of a person or business. Instead, it is clear that the Respondent intends to use the disputed domain name for commercial gain to misleadingly divert consumers.
The disputed domain name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and/or services advertised and promoted at the disputed domain name. In using the Complainant’s trademark in the disputed domain name, the Respondent intends to attract for commercial gain a proportion of Internet traffic which would otherwise have reached the Complainant’s websites, and direct that traffic to the Respondent’s website instead. Consequently, the Respondent is likely to receive additional enquiries and increased sales as a result of Internet users wrongly believing that the Respondent is affiliated with, endorsed by or connected to the Complainant. Indeed, the Respondent has prominently positioned the VELUX trademark in the disputed domain name, which creates the impression that the Respondent’s business is endorsed by, affiliated with or otherwise connected to the Complainant. This is likely to cause confusion among Internet users.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides for transfer or cancellation of the disputed domain name if the Complainant establishes each of the following elements set out in paragraph 4(a):
(i) The 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 the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel finds that the Complainant has met this burden. A. Language of the Proceeding
As an initial matter, the Panel determines that the language of the proceeding should be in English. Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the Registration Agreement unless otherwise specified in that agreement or agreed by the parties. The Rules also provide that the Panel has the authority to determine otherwise, having regard to the circumstances of the administrative proceeding. The Complainant requested the proceeding be in English. The Center formally notified the Respondent of the Complaint in both Chinese and English, giving the Respondent opportunity to comment on the language of the proceeding. The Respondent did not comment. If the Complainant were to submit all documents in Chinese, the proceeding would be unduly delayed. What is more, although the language of the Registration Agreement is Chinese and the Respondent is located in China, the Respondent’s conduct suggests that the Respondent understands English. The disputed domain name includes the letters “bj,” which, as discussed below, could refer to a euphemism for a sexual act or the city of Beijing, but in either case it is an English term. B. Identical or Confusingly Similar
The Complainant has rights in the VELUX trademark. The Complainant has established that it is the owner of 450 trademark registrations for the mark VELUX or VELUX-formative marks, registered well before the registration of the disputed domain name. The Panel accepts that the Complainant’s VELUX trademarks are internationally widely known.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The threshold question for confusing similarity under the UDRP involves the comparison between the trademark and the domain name itself to determine the likelihood of Internet confusion. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The disputed domain name consists of “velux” – the Complainant’s trademark – and the letters “bj”. The letters “bj” may simply be two letters that are not meant to form any word, as suggested by the Complainant, or they may be shorthand for the city of Beijing or a reference to a sexual act. In either case, they do not distinguish the disputed domain name from the VELUX trademarks and do not avoid confusing similarity.
The term “velux” is the first and prominent part of the disputed domain name. The Respondent did not respond and has not provided an explanation of the meaning of “bj” in the disputed domain name, leaving the Panel to consider the term in light of commonly accepted meanings. The term “bj” is a recognized abbreviation for Beijing; however, the addition of a geographically descriptive term to a domain name does not affect the assessment of whether the disputed domain name is similar to the Complainant’s trademark. See Compagnie Générale des Establissements Michelin-Michelin & Cie. v. Tgifactory,WIPO Case No. D2000-1414; see also A Inc., Amazon Technologies, Inc., Goodreads, Inc. v. Shi Lei aka shilei,WIPO Case No. D2014-1093. Indeed, it is likely to be recognized by consumers as indicating a local website of the trademark owner. See Inter IKEA Systems B.V. v. Muhannad Mayyas,WIPO Case No. D2016-0067 (); Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel,WIPO Case No. D2015-0210 (). Although the Respondent is in China, the Respondent’s address is in Shanghai and not Beijing. Therefore, in light of the pornographic nature of the Respondent’s website, the Panel believes it is more likely that the term “bj” as included in the disputed domain name is a reference to a sexual act. The letters “bj” are an accepted euphemism for a sexual act. See The Free Dictionary by Farlex, “/BJ”; Acronym Finder, “/BJ.html”; Cambridge Dictionary, “/us/dictionary/English/blow-job”; D, “www.d/browse/blow-job”. In this case, the term is descriptive and a reference to the pornographic content on the Respondent’s website. See Kik Interactive Inc. v. Nestor Hernandez,WIPO Case No. D2016-0738 (the addition of words like “adult,” “hookups” and “flyrts” to the complainant’s trademark in the disputed domain names did not distinguish the domain names where the disputed domain names pointed to websites featuring sexual content or adult services); V&S Vin & Spirit AB v. VCN – Whois Protection Service Panama,WIPO Case No. D2010-0715 (); Research in Motion Limited v. Thomas J Buck/CSMJOBS Enterprises – Private Registration,WIPO Case No. D2008-1065 (); Ebay Inc. v. E and Tony Caranci,WIPO Case No. D2000-1632 ( and ). As such, it does nothing to change the overall commercial impression of the disputed domain name or to distinguish the disputed domain name from the Complainant’s trademarks. The Panel finds the disputed domain name is confusingly similar to the Complainant’s VELUX trademarks. C. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
Under paragraph 4(c) of the Policy, a respondent may demonstrate rights or legitimate interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed 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 in the record to suggest that the Respondent has been commonly known by the disputed domain name. The Complainant contends, and the Respondent does not deny, that the Complainant never licensed or authorized the Respondent to use the VELUX trademark or to register any domain name incorporating that trademark. Additionally, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services. Although the offering of an adult-oriented website is not illegitimate per se, using a domain name that is confusingly similar to the Complainant’s trademarks to attract users to the Respondent’s commercial site is not a bona fide offering of services. See A & F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. v. Justin Jorgensen,WIPO Case No. D2001-0900 (). The Respondent is trading off of the goodwill and reputation of the Complainant’s trademarks. See id. D. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that the Respondent has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has 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 the Respondent’s 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 such web site or location or of a product or service on such web site or location.
The Respondent must have been aware of the Complainant and its trademarks at the time of registration of the disputed domain name. The Complainant is widely known throughout the world as are the VELUX marks. The Complainant has used the VELUX marks in commerce for decades prior to the registration of the disputed domain name. Additionally, the Complainant owns many trademark registrations around the globe, including in China, where the Respondent is located. Although the Respondent may not be under an obligation to conduct an exhaustive trademark search before acquiring a domain name, a simply Internet search for VELUX would have yielded many obvious references to the Complainant and its VELUX-branded goods and services. Bad faith registration can be inferred from the Respondent’s registration of a domain name incorporating a widely-known mark of which the Respondent must have been aware without any evident right to do so. See Hurruyet Gazetecilik ve Maatbaacilik Anonim Sirketi v. Onuno L.L.C.,WIPO Case No. D2015-1504; AXA S.A. v. P.A. van der Wees,WIPO Case No. D2009-0206; BHP Billiton Innovation Pty Ltd v. Ravindra Bala,WIPO Case No. D2008-1059.
“By fully incorporating the [VELUX trademark] into the disputed domain name and by using the website at such domain name in connection with a commercial website providing pornographic content, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy.” V&S Vin & Sprit AB v. VCN - Whois Protection Service Panama, supra. Additionally, using a widely-known trademark in connection with a pornographic website has been found to be bad faith registration and use. See id.; La Quinta Worldwide, LLC v. Andirich, AndiPerdana / WhoisGuard Protected,WIPO Case No. D2011-1684 (“The conduct of using the Complainant’s trademark as part of a domain name in order to expose Internet users to material of a pornographic nature is evidence of bad faith.”); GA MODEFINE SA v. pumo,WIPO Case No. D2006-0619.
Accordingly, the Panel finds that the Respondent’s registration and use of the disputed domain name is in bad faith. 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.
Kimberley Chen Nobles
Sole Panelist
Date: September 1, 2016
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