The Complainant is VKR Holding A/S, Denmark, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Sydney kibuuka, United States of America (“United States”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, 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 September 27, 2021 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 September 28, 2021.
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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent sent an email communication on October 27, 2021. On December 21, 2021, the Panel issued the Procedural Order Nº 1 to which the Respondent remains silent.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on November 18, 2021. 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 BackgroundThe Complainant is VKR Holding A/S, a Danish company seated in Horsholm, Denmark. The Complainant is the parent company of the VELUX Group and responsible for managing their intellectual property. VELUX Group, on its turn, is part of the VKR Group and is its largest and best known company, active in more than 40 countries. All details on the size and on the renown of the Complainant and its group was presented as Annexes 6 and 7 of the Complaint.
The Complainant, through its subsidiaries, offers roof windows, skylights, vertical windows and systems, thermal solar energy systems, decoration and sun screening products, ventilation, and indoor climate products.
The Complainant owns several registrations for the VELUX trademark, covering a wide range of products and services. Proofs of these registrations were duly produced in the Complaint as Annex 1, including United States trademark No. 1492904, registered on June 21, 1988.
The disputed domain name was registered on May 10, 2021 and resolves to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name
The expression chosen by the Respondent to compose the disputed domain name together with “velux” is “properties”, which is related to the Complainant’s main activities. The descriptive terms do not negate the confusing similarity between the disputed domain name and the Complainant’s trademark. On the contrary, they lead to confusion, given the presence of the Complainant’s mark.
The Complainant owns several registrations worldwide for the trademark VELUX, as evidence by Annex 1 to the Complaint. Also evidence of the renown of the mark VELUX was produced in Annexes 4 to 7 of the Complaint.
The disputed domain name adopted by the Respondent – a reproduction of the Complainant’s registered mark associated with a descriptive expression – shows a clear intention of misleading the Internet users to its website – that offers links to third-party websites, some of which directly compete with the Complainant’s business. The Complainant underlines that the disputed domain name gives the impression that it is in all ways associated with the Complainant.
B. RespondentWhile the Respondent failed to comply with the deadline to present his response, he addressed an email to the Center dated October 27, which contents did not comment, respond nor contest the allegations of the Complainant.
The Respondent however refers to an email communication previously sent on October 24, 2021, that the Center does not seem to have received. Consequently, the Panel issued a Procedural Order, asking the Respondent to resubmit the referred correspondence, or any comments to the Complaint.
Since the Respondent failed to respond the Procedural Order, and considering that the only correspondence received was untimely, the Panel decided not to take it into consideration.
6. Discussion and FindingsThe Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
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 to the disputed domain name; and
iii. The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarRegarding the first of the elements, the Panel is satisfied that the Complainant has presented adequate proof of having rights in the mark VELUX, registered throughout the world. In addition, the Complainant has been providing a full range of products worldwide for decades and under the VELUX mark since the forties of last century.
Further, the Panel finds that disputed domain name
Hence, the Panel concludes that the first of the elements of the Policy has been satisfied by the Complainant in this dispute.
B. Rights or Legitimate InterestsThe Panel understands that the mark VELUX is naturally associated with the Complainant, since it is not only registered as a mark in its name, but also has been used to identify its products for almost 80 years.
Further, the Complainant provided sufficient evidence of the fame of the mark VELUX and the full range of products offered under this name to its clients all over the world. The Respondent is using the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant’s business or that directly references the Complainant’s competitors. This use cannot give rise to rights or legitimate interests of the Respondent in the disputed domain name. Hence, the Panel considers that the Respondent, in all likelihood, could not be unaware of the mark VELUX, and its direct relation to the Complainant.
The Panel is satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. This has not been rebutted by the Respondent, despite its untimely response.
Thus, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. For this reason, the Panel finds that the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad FaithIt is clear to the Panel that the Respondent has in all probability registered the disputed domain name with the purpose of taking advantage of the Complainant’s mark.
The Panel finds that the disputed domain name was likely registered to mislead consumers – hence the addition of the term “properties”. Further, the additional term can be considered an allusion to the Complainant, a fact from which the Respondent may well profit by giving Internet users the impression that the disputed domain name belongs to the Complainant.
The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant, and the Panel accepts that the disputed domain name may be intended to capitalize on the fame and goodwill of the Complainant’s trademarks. The fact that the disputed domain name resolves to a website offering pay-per-click links to several products, including some of which are direct competitors to the Complainant and its business, leads the Panel to this conclusion.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant when registering the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element of the Policy.
7. DecisionFor 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
Alvaro Loureiro Oliveira
Sole Panelist
Date: December 29, 2021