WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Keyword Marketing, Inc.

Case No. D2008-0014

 

1. The Parties

The Complainant is VKR Holding A/S, of Denmark, represented by Zacco Denmark A/S, Denmark.

The Respondent is Keyword Marketing, Inc., of Saint Kitts and Nevis.

 

2. The Domain Name and Registrar

The disputed domain name <veluxcanada.com> is registered with BelgiumDomains, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2008. On January 4, 2008, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On January 4, 2008, BelgiumDomains, LLC 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”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 30, 2008.

The Center appointed William F. Hamilton as the sole panelist in this matter on February 11, 2008. 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

(i) The Complainant, VKR Holding A/S, is the ultimate parent company in the VKR Group companies (the “Velux Group”).

(ii) The Velux Group has obtained trademark registrations for the mark VELUX dating back to 1942 in Denmark.

(iii) The VELUX mark is registered in more than 100 countries around the world, including the European Community and the United States of America.

(iv) The Velux Group owns and conducts business through a number of domain names such as <velux.com>.

(v) The VELUX mark is promoted internationally in product catalogues, advertising, television commercial and sponsorships of events, such as the “VELUX 5 Oceans,” a nautical event covering the 5 oceans of the world.

(vi) On or about November 9, 2007, the Velux Group wrote to the Respondent requesting a transfer of the domain name. No response was received.

(vii) The domain <veluxcanada.com> resolves to a web portal offering “Sponsored Listings” of products competing with those offered by the Velux Goup, including but not limited to roof windows, skylights, and various retailers purportedly offering VELUX brand shades and blinds.

(viii) The Complainant owns the domain name <velux.ca> which promotes the sale in Canada of the Complainant’s sky lights, roof windows, and accessories.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends the domain name <veluxcanada.com> is confusing similar to the Complainant’s VELUX mark. The Complainant contends the only difference between the mark is the element “canada” which comes after the prominently featured VELUX mark which is the “most dominant and the most distinctive element of the contested domain name.”

The Complainant further asserts that the Respondent has no rights or interests in the VELUX mark and has only registered the contested domain name to trade on the goodwill of the well-known VELUX brand.

The Complainant further contends the contested domain name was registered and is used in bad faith, as the Respondent must have been aware of the VELUX mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) the domain name is identical or confusingly similar to the Complainant’s trademarks or service marks; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The Complainant must carry its burden of proof by a preponderance of evidence. Bootie Brewing Company v. Deena D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185.

A. Identical or Confusingly Similar

The contested domain name incorporates the Complainant’s mark VELUX in its entirety and merely adds the suffix “canada.” It is well established that the mere addition of such a geographical qualifier does little, if anything, to avoid confusion. AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Bodegas Vega Sicilia, S.A. v. www.portadedominios.com, WIPO Case No. D2000-1026; Arthur Guinness Son & Co. (Dublin) Limited v. Kevin Graham/Kevin Paul Wayne, WIPO Case No. D2000-1699. Accordingly, the Panel determines the contested domain name is confusingly similar to the VELUX mark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out in particular but without limitation three circumstances which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii), namely:

(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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 Respondent has not made any attempt to demonstrate any rights or legitimate interest in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions 4.6 (panel may draw negative inferences in absence of a response). The Respondent’s website does not evidence any prior rights or legitimate interest in the VELUX mark or indication that the Respondent has been commonly known by the domain name. Moreover, the use of the domain name is clearly commercial. “The Respondent’s use of the Domain Name to attract Internet users to its websites and then redirect them to other websites, some of which offer for sale the Complainant’s direct competitors’ products, presumably receiving compensation for this misdirection, cannot be considered a bona fide use of a domain name as per paragraph 4(c)(iii) of the Policy.” Sanofi-aventis v. Montanya Ltd., WIPO Case No. D2006-1079.

Accordingly, the Panel determines that the Complainant has made an initial prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to provide any proof to the contrary. WIPO Overview of WIPO Panel VIEWS on Selected UDRP Questions, 2.1. The Panel thus concludes that the Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The VELUX mark is well-known for skylights and roof windows. Indeed, the contested domain name resolves to a site which features “sponsored Links” to websites offering VELUX brand products as well as competitive products. No other basis for the Respondent’s selection of the highly distinctive VELUX mark in the contested domain name can be inferred under the circumstances in the record, except that the Respondent sought to attract Internet users for commercial gain to its site by means of initial confusion. It is also well established by “numerous WIPO panels that attracting Internet traffic and diverting it to website(s) selling products of complainant’s competitors by using a domain name identical or confusingly similar is evidence of bad faith under paragraph 4(b)(iv) of the Policy.” Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (see WIPO cases cited therein). The Panel thus determines that the Respondent registered and is using the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <veluxcanada.com> be transferred to the Complainant.


William F. Hamilton
Sole Panelist

Date: February 25, 2008