Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
Respondent is Anonymize, Inc, Privacy Administrator of Bellevue, Washington, United States of America (“United States”) / Daniel Berlin, Intersolved, LLC of Franklin, Tennessee, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 30, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant did not amend the Complaint. Upon Complainant’s request dated December 2, 2016, the proceedings were suspended for the parties to seek to resolve the dispute. Upon Complainant’s request dated December 22, 2016, the proceedings were reinstituted on December 27, 2016.
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 Respondent of the Complaint, and the proceedings commenced on January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 8, 2017.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 13, 2017. 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
Complainant, the Danish company VKR Holding A/S, is the owner of the VELUX Group, a worldwide manufacturer of roof windows and accessories.
Complainant is the holder of, inter alia, the following registered United States trademarks:
- VELUX, word mark, registered with the United States Patent and Trademark Office (“USPTO”) under No. 1492904 on June 21, 1988 in classes 6, 19 and 20;
- VELUX, figurative mark, registered with the USPTO under No. 1997965 on September 3, 1996 in class 19.
Complainant has used the VELUX trademark since at least 1942.
The Disputed Domain Name was registered on April 15, 2015, and refers to a parking page with sponsored links. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, Respondent has not used the Disputed Domain Name in connection with any legitimate use. Also, according to the Complainant, Respondent has not been commonly known by the Disputed Domain Name.
Finally, the Complainant considers that the Disputed Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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 will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are VELUX trademarks in which it has rights. The trademarks have been registered and used in various countries.
The Disputed Domain Name reproduces Complainant’s trademark VELUX in its entirety, simply adding the geographic term “america”. The Panel is of the opinion that the mere addition of non-distinctive or geographic text to a complainant’s trademark does not avoiding a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395, where the domain name was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783, where the domain name was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva / C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with the addition of the word “download” because users typically download complainant’s software).
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s registration and use of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy, paragraph 4(c)(iii). It appears that Respondent has been using the Disputed Domain Name to refer to a parking page with sponsored links, some of which directly refer to the Complainant’s trademarks and products (“Velux Roof”, “Roof Windows and Skylights”, etc.). Some of these links promote products and services of third parties which are either competing with or closely related to the products and services offered by Complainant. According to the Panel, this cannot be considered as fair use of the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that is being used in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant's rights in the VELUX trademark at the moment it registered the Disputed Domain Name. Complainant has valid and wel−known trademarks in the United States, where Respondent is located. A simple trademark search on the Internet would have revealed the presence and use of the VELUX trademark by Complainant. Moreover, the Panel considers that the nature of the links on the website linked to the Disputed Domain Name creates at least an inference that Respondent was aware of Complainant at the time of registration of the Disputed Domain Name (see Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s r.o.,WIPO Case No. D2015−1512).
The Panel therefore finds that Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant's rights in the trademarks).
As mentioned above, Respondent uses the Disputed Domain Name to refer to a parking page incorporating sponsored links to promote services of third parties which are either competing with or closely related to the products and services offered by Complainant. While the intention to earn click-through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623).
The Panel therefore concludes that, by using the Disputed Domain Name incorporating Complainant's trademark in connection with a website containing links referable to products and services relating to Complainant's industry, Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant's trademark. In accordance with paragraph 4(b)(iv) of the Policy, this is evidence of registration and use in bad faith.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used 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.
Flip Jan Claude Petillion
Sole Panelist
Date: February 27, 2017
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