Complainant is VKR Holding A/S, Denmark, represented by Lisbeth Ferdinand, Denmark.
Respondent is WhoisGuard, Inc., Panama / Markus Kohl, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2020. On January 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 27, 2020. 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 18, 2020. The Center appointed Colin T. O'Brien as the sole panelist in this matter on February 20, 2020. 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 is a company incorporated under the laws of Denmark and is the owner of a company called the Velux Group the owner of VELUX trademark registered in the United States of America (“United States”) on June 21, 1988, registration no. 1492904. Complainant has been selling roof windows and other products since 1941. Complainant sells in approximately 90 countries including throughout Europe. Complainant markets VELUX roof windows throughout the world including Europe. Complainant directs its marketing effort toward professional users including their advisers and dealers in building materials. Complainant’s marketing activities include the distribution of product catalogues, advertising, television commercials and sponsorship of sporting events. The disputed domain name was registered on May 27, 2019. 5. Parties’ Contentions A. Complainant Complainant has registered the VELUX mark in the United States, European Union and numerous other countries. The disputed domain name incorporates Complainant’s word mark VELUX within the disputed domain name itself. The disputed domain name has added the letters “gene” to the Complainant’s VELUX mark. The letters “gene” in combination with the trademark does not constitute a generic description or word in any way. The additional letters “gene” do not reduce the disputed domain name’s confusing similarity with Complainant’s VELUX mark. The disputed domain name was registered on May 27, 2019 without Complainant’s knowledge or permission. Respondent’s website is a portal site with links to sites which include skylights and roof windows. The only distinctive element of the disputed domain name is Complainant’s registered trademark. VELUX is a made-up word invented by Complainant and is not descriptive. Respondent must have been well-aware of Complainant and its rights before the disputed domain name was registered. Respondent is not commonly known by the disputed domain name. Respondent is using the disputed domain name in a commercial manner and its use is not legitimate. Respondent’s website at the disputed domain name included links to sites offering competing products to the Complainant’s products. By creating a likelihood of confusion with the VELUX mark Respondent has used the disputed domain name to intentionally attempt to attract Internet users to its website or other online location for commercial gain. The unauthorized use of Complainant’s registered VELUX mark to provide links to sites offering competing products to Complainant’s products cannot be considered fair use. Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website which resolves from the disputed domain name. Respondent is creating a likelihood of confusion with Complainant’s marks effectively hijacking part of Complainant’s natural traffic to generate additional revenue for Respondent who is using the disputed domain names (sic) to forward consumers to its own website. There is no other basis for Respondent’s selection of the highly distinctive VELUX mark in the disputed domain name except that Respondent seeks to attract potential customers for commercial gain to its website by means of initial confusion. Respondent disrupts Complainant’s business in the hope that is might induce Complainant to offer a ransom for the disputed domain names (sic). B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant has demonstrated it owns registered trademark rights in the VELUX mark. Complainant has particularly strong rights in the VELUX mark in Europe based on its almost 80 years of use from its home of Denmark. Additionally, many prior panels have held that the VELUX mark is well-known see, VKR Holding A/S v. Qun Shao, Shao Qun,WIPO Case No. D2019-2344 (transferring Complainant has demonstrated rights in VELUX in the European Union and the disputed domain name was registered by an individual that lived in the European Union at the time of Registration. Complainant has not provided any evidence that it owns rights in the term “genevelux” but it has made a prima facie case that the disputed domain name is confusingly similar to its VELUX mark. While this is a close case Complainant has extensive rights in the VELUX in Europe and has asserted that the disputed domain name is confusingly similar to Complainant’s mark. Respondent chose not to respond to this Complaint. Accordingly, the Panel concludes the disputed domain name is confusingly similar to Complainant’s VELUX mark. B. Rights or Legitimate Interests Complainant has the burden to establish that Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that Complainant needs only make out a prima facie case, after which the onus shifts to Respondent to rebut such prima facie case by providing evidence demonstrating rights or legitimate interests in the disputed domain name. Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states the following circumstance if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 or service mark at issue.” The disputed domain name was registered under a privacy proxy services and the unmasked registrant details lists the registrant as “Markus Kohl” therefore there is nothing to suggest Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has trademark rights in the disputed domain name. The Panel accepts Complainant’s submission that there is no connection between the Parties. According to the Complaint the disputed domain name resolves to a website that contains links for products which are competitive of Complainant. The Annexes to the Complaint do not actually show which websites are linked from the website which is a standard parking page. However, Respondent did not present any arguments that the assertions made by Complainant are untrue therefore Panel finds that this use of the disputed domain name is not in connection with a bona fide offering of goods or services. The Panel finds that Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent in failing to reply to Complainant’s contentions has not rebutted such prima facie case. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and so Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith To establish the third UDRP element, Complainant is required to prove the disputed domain name was registered and is being used in bad faith. The section of the Complaint submitted by Complainant on this section is confusing and somewhat contradictory but its basis for claiming Respondent’s registration in bad faith rests on the fact the famous VELUX trademark is highly distinctive and a registration of a domain name which incorporates its famous VELUX infers registration in bad faith. Respondent has not provided any counterargument to Complainant’s assertion thus the Panel finds that the Registrant registered the disputed domain name in bad faith given that it contained such a famous trademark as VELUX. Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.” Complainant has submitted evidence that the disputed domain name resolves to a parking page that contains links to both Complainant’s goods as well as those of its competitors. This parking page appears to have been created by the registrar of the disputed domain name. However, the fact that these links were generated by the registrar or auction platform does not prevent a finding of bad faith. Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912 is instructive. In that case the panel wrote: “…Respondent states that he has not received any money or discount from the website. However, these facts do not exclude bad faith under paragraph 4(b)(iv) for the following reasons: (i) paragraph 4(b)(iv) requires the Respondent to intend to attract Internet users ‘for commercial gain’, but this gain does not need to be derived by the Respondent himself. The Respondent cannot infringe the Complainant’s rights with impunity on the basis that it is allowing a third party to reap the profits of its wrongful conduct; (ii) the Respondent has at all times been in contractual control of the content of the website at the disputed domain name, and had the power to instruct the Registrar to remove the parking page.” In this case Complainant has provided evidence that the disputed domain name contained links to Complainant and its competitors. Absent any rebuttal from Respondent the Panel finds this use was 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, Colin T. O'Brien
Sole Panelist
Date: April 9, 2020
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