The Complainant is VKR Holding A/S of Horsholm, Denmark, represented by Lisbeth Ferdinand Petersen, Denmark.
The Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Evgenia Reznik of Nakhodka, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2019. On March 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, 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 the Complainant on May 21, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 25, 2019.
The Center verified that the Complaint together with the amended 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 April 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2019. The Respondent submitted informal response on April 18, 2019.
The Center appointed Taras Kyslyy as the sole panelist in this matter on May 9, 2019. 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 which manufactures roof windows and accessories, such as blinds, under the mark VELUX.
The Complainant holds numerous word trademarks consisting of the word “velux”, throughout the world, since 1942 as far as its first registration in Denmark is concerned. The Complainant in particular owns trademark in the Russian Federation, in particular registration No. 75059, registered on April 2, 1984, for goods of 6, 19, 20, 24 classes, covering inter alia various types of window coverings.
The Respondent registered the disputed domain name on January 30, 2018. As of the time the Complaint was filed, the disputed domain name was linked to a website where the Respondent offered services pertaining to inter alia sales of various window coverings targeting Russian consumers. It now resolves to an inactive site which states that the disputed domain name is not connected to a website yet.
In March, April, November 2018 and February 2019 the Complainant sent several cease and desist letters targeting the Respondent, to which the Respondent did not react. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical to the Complainant’s trademark. The distinctive element of the disputed domain name is identical to the Complainant’s trademark. The word “-shop” causes a link to the Complainant’s business rather than distinguish the Respondent’s business to a sufficient extent.
The Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered without knowledge or permission of the Complainant. The Respondent is using the disputed domain name to direct to its website, which promotes curtains and creates likelihood of confusion with the Complainant’s trademark and business. The Complainant’s trademark is very distinctive, and the Respondent was aware of it at the time of registration of the disputed domain name. Therefore, the Respondent has used the disputed domain name to intentionally attempt to attract for commercial gain Internet users to its website. The Respondent did not react to the Complainant’s cease and desist letters. The Respondent’s purpose of using the Complainant’s trademark in the disputed domain name is to attract customers to its website and generate revenue for the Respondent.
The disputed domain name was registered and is being used in bad faith. By using the disputed domain name, the Respondent attempts to attract, for commercial gain, Internet users. This is achieved by creating a likelihood of confusion with the Complainant’s trademark and effectively hijacking part of the Complainant’s natural traffic to generate additional revenue to the Respondent. The Respondent seeks to attract potential customers for commercial gain to its website by means of initial confusion and this is the reason for selection of the disputed domain name by the Respondent. The Respondent’s actions are likely to cause damage by reducing Internet traffic to the Complainant’s website, lost sales and disruption of the Complainant’s business. The Respondent may disrupt the Complainant’s business to induce the Complainant to offer a ransom for the disputed domain name. B. Respondent
The Respondent provided informal response to the Complainant’s contentions. The Respondent explained that “velux” in the disputed domain name derived from “ve” as short for velour fabric, and “lux” as high quality. The Respondent did not know about existence of a company with “Velux” name and regrets of possible violation of rights. The Respondent would like to refuse the disputed domain name and requested to close the case. 6. Discussion and Findings A. Consent for the transfer
The Panel finds that the Respondent in its informal response to the Complaint’s contentions effectively provided consent to the transfer of the disputed domain name. The wording of the consent, however leaves a degree of ambiguity as to its scope. Considering the above and according to paragraph 4(b)(iv) of the Policy the Panel finds it appropriate to proceed to a substantive decision on the merits. B. Identical or Confusingly Similar
The generic Top-Level Domain (“gTLD”) “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275).
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.
According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
The disputed domain name incorporates the entirety of the Complainant’s trademark, adding the term “shop” a meaningless “-” and a gTLD “.com”, which does not prevent finding the confusing similarity with the Complainant’s trademark.
Considering the above the Panel believes the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.
The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant and the Respondent sell similar goods, namely window coverings. The Complainant was quite known in this market segment with its trademark in the Russian Federation well prior to the registration of the disputed domain name. While working in the same market segment the Respondent when choosing the disputed domain should have known of the Complainant’s prior registered and known trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3.0 the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use. The Panel finds that these at least criteria (ii) and (iii) apply in the present case and the Respondent is using the disputed domain name in bad faith.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letters, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny,WIPO Case No. D2009-1022).
In addition, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith.
Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) 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.
Taras Kyslyy
Sole Panelist
Date: May 15, 2019
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