The Complainant is VKR Holding A/S of Horsholm, Denmark, internally represented.
The Respondent is Code 4 Designs, Code4Design of Rossendale, Lancashire, United Kingdom of Great Britain and Northern Ireland ("UK"). 2. The Domain Name and Registrar
The disputed domain name is registered with LCN.COM Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 9, 2016. On November 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2016. The Respondent submitted an email to the Center on December 8, 2016.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on December 21, 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 is a company incorporated in Denmark and the owner of a worldwide manufacturer of roof windows and accessories, the VELUX Group, which started its business in 1941 and has been selling its products in the UK, the Respondent's domicile, since 1954.
The Complainant is the owner of 450 trademark registrations throughout the world including or incorporating the word VELUX, including the United States Registration No. 691115 of July 28, 1950.
The disputed domain name was registered on July 1, 2016 and is being used by the Respondent to promote installation services for products of the Complainant. 5. Parties' Contentions A. Complainant
In summary, the Complainant contends the following:
The disputed domain name is confusingly similar to the Complainant's VELUX trademark because it incorporates the word mark VELUX, combined with the words "window installers", which is purely descriptive of the services being promoted via the disputed domain name.
The disputed domain name is being used to commercially advertise and promote the Respondent's business. The unauthorized use of the Complainant's registered trademarks in this way cannot be considered fair use.
By using the disputed domain name to promote its own business, the Respondent intentionally intends to attract, for commercial gain, by directing part of the Internet traffic which would have reached the Complainant's websites to the Respondent's website instead. Furthermore, the disputed domain name 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 amongst Internet users who will believe that the disputed domain name is operated by, authorized by, endorsed by or connected to the Complainant. B. Respondent
In its email of December 8, 2016, the Respondent in summary contends the following:
The Respondent has purchased the disputed domain name in good faith after checking its availability, with the intention of offering the installation of market leader windows to the Respondent's range of services. Since then the Respondent has worked hard optimizing its website for enquiries to fit VELUX windows and not to divert potential buyers to any similar product the Respondent has a commercial interest in.
The Respondent's website does not use any language such as "approved/accredited" or "certified" and therefore is not particularly designed to mislead any customers. Moreover, the term "Velux window" is pretty much used to describe a roof window in most cases and could be qualified as a descriptive term.
The Respondent's position is that the disputed domain name will generate forecasted income of at least GBP 50,000 per year. Therefore, the Respondent is reluctant to relinquish what the Respondent believes is its property without any benefit in return. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the VELUX trademark in its entirety.
The addition of the generic term "window installers" does not affect the overall impression of the dominant part of the disputed domain name, which is the VELUX trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark and that the requirement of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
According to the consensus view in UDRP panel decisions (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Section 2.3), a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such so-called Oki Data principles (cf., e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc.,WIPO Case No. D2007-1524, ; Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0841, ; Red Pocket Inc. v. American Wireless LLC,WIPO Case No. D2013-0319, ).
First of all, the present case must be distinguished from the "classic Oki Data cases", where a reseller or distributor is reselling products of the complainant. The Respondent is merely selling services related to the products of the Complainant (installation of VELUX windows), not the products themselves. Internet users may or may not expect an original producer of goods such as windows to offer installation services as well. Window installations are usually done by craftsmen or building companies.
Nonetheless, the Oki Data test can provide certain guidance for the case at hand. While it was developed in connection with an authorized reseller, the test is regularly also applied in cases of unauthorized resellers (cf., e.g., Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, supra).
Under the Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, ), an offering of services or products of the complainant under a domain name incorporating the complainant's trademark must meet the following criteria:
- a respondent must actually be offering the goods or services at issue;
- a respondent must use the website to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- a respondent must take steps to prevent confusion e.g., by making clear on the corresponding website that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the respondent's website is the complainant's official site;
- a respondent does not corner the market in such domain names depriving the trademark owner of reflecting its own mark in a domain name.
Applying the Oki Data principles to the fact pattern of the present case, it should be noted that:
- the Respondent is actually offering services directly related to the products of the Complainant;
- the Respondent is using its website only to sell installation services for VELUX windows;
- the Respondent is displaying its trade name (KIERCAM) prominently on the website and not using the Complainant's mark except to describe the goods corresponding to the services it offers; and
- the Respondent does not appear to be cornering the market in "VELUX" domain names or depriving the Complainant from reflecting its trademark in such domain names.
While the Respondent is not using any specific disclaimer (that it is neither affiliated to nor authorized by the Complainant to provide the services), looking at the Respondent's website which prominently uses only its own logo, it is sufficiently clear in the Panel's view that the website is not affiliated with the Complainant.
Moreover, while the Respondent is seeking to have Internet users find installation services for the Complainant's products, it does not seem to be creating any confusion or attempting to disrupt the Complainant's business. The Respondent's services are also accurately reflected in the disputed domain name and importantly on the corresponding website. As stated by the panel in the case of Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698, "[a]n overarching principle of the Oki Data approach is that a use of a domain name cannot be 'fair' if it suggests affiliation with the trademark owner"; looking at the overall facts and circumstances of this case, that does not appear to be the case here.
Noting in particular the Respondent's claims as to the valuation it places on the disputed domain name, certain aspects of the Respondent's behavior nevertheless raise some questions in the Panel's mind. In the Complainant's favor, it appears that the overall look and feel of the Respondent's website bears some similarities to that of the Complainant; at the same time, what would normally appear to be links on the Respondent's page do not seem to actively point a user to another location (thus undercutting the Respondent's claim that it has "worked incredibly hard optimizing the website").
The Panel notes also that the Complainant makes some rather carefully worded assertions in the Complaint which seem to acknowledge that unauthorized third parties would be providing services related to the Complainant's goods – in this respect the Complaint refers to a training program known as the "VELUX Installer Partnership" and a related "VELUX Certified Installer" scheme. Even so, it is worth noting that based on the present record the Respondent appears to be only offering services related to the Complainant's goods, even if not under the Complainant's "Certified Installer" scheme. In this regard, it is also unclear what quality control may be applied by the Complainant in respect of its programs and how the Respondent's behavior may or may not be in line with such standards.
On the other hand, while the Complainant points to the worldwide fame of its mark, the Respondent somewhat plausibly claims that the Complainant's mark (perhaps by virtue of its reputation) may have attained a somewhat descriptive quality in the relevant industry – this is supported by the text on the Respondent's website: "Looking for a VELUX, We are competitive & reliable" and "In addition to our own guarantee all our installations, can carry a much longer manufacture warranties…"). It is also to be noted that the Complainant has provided copies of correspondence between the parties (dated September 25, 2016: "We can see from your website that you still promote and sell competing products…") which based on the present record and website use, insofar as there do not appear to be any competing products offered for installation, seem to suggest that the Respondent has taken corrective action to mitigate potential confusion.
Against this background, the Panel considers that the questions raised by the parties (notably recalling the competing aspects of the Complainant's "VELUX Certified Installer" scheme, and the Respondent's arguments as to the Complainant's mark having obtained a somewhat descriptive character) may be better addressed by a court where cross-examination and discovery are available.
As such, the Panel holds that the Complainant has thus not fulfilled the requirements under paragraph 4(a)(ii) of the Policy (the Panel does not have to decide whether the third element of the Policy is fulfilled under the circumstances).
Mindful that the present decision is based on the record before the Panel, it is also worth noting however that if the Respondent's behavior, notably including as it relates to the website content, should change such that it would be plainly contrary to the Oki Data principles (see Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, supra), the Complainant may have grounds to refile its case. 7. Decision
For the foregoing reasons, the Complaint is denied.
Tobias Zuberbühler
Sole Panelist
Date: December 29, 2016
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