WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/s v Above.com Domain Privacy/Host Master, Transure Enterprise Ltd.
Case No D2012-0040
1. The Parties
The Complainant is VKR Holdings A/S of Hersholm, Denmark, represented internally.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia; Host Master, Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name & Registrar
The disputed domain name <velluxusa.com> is registered with Above.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration & Mediation Center (“the Center”) on January 12, 2012. On January 12, 2012, the Center transmitted by email to Above.com Inc a request for registrar verification in connection with the disputed domain name. On the same date, Above.com Inc 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 January 19, 2012, 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 January 20, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2012.
The Center appointed Archibald Findlay SC as the sole panellist in this matter on February 21, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance & Declaration of Impartiality & Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the owner or holding company of the group known as the Velux Group. It is also the registered owner of the VELUX trademark pursuant to a series of more than 80 registrations around the world, including United Kingdom.
It also has further registered trademarks in the European trademark - CTM and international trademark – Madrid.
According to the registrar’s verification response, the disputed domain name was registered on March 19, 2009.
5. Parties’ Contentions
The Complainant’s Complaint may be summarised as follows:
The Complainant contends that it has, since 1941, continuously carried on business as a designer and manufacturer of its VELUX roof windows and other products. In addition to the countries in which it has registered trademarks, it sells in approximately 90 countries throughout the world, resulting in its business having grown substantially to become a well-know brand worldwide and controlled from Denmark.
The Complainant further contends that, through its intense marketing effort, the VELUX trademark has acquired a reputation throughout the United States of America and numerous other countries. Furthermore it has a significant turnover relating to the sale of its roof windows, blinds and other products, which, due to its intense marketing programmes, results in the Complainant and its associate companies incurring substantial marketing costs in the various countries in which it trades.
The Complainant directs its marketing efforts towards professional users, including their advisers and dealers in building materials, as well as towards end users, including home owners. These marketing activities also include the distribution of product catalogues, advertising, television commercials and sponsorship, notably the “VELUX Five Oceans”, which is a single-handed yacht race around the five oceans of the world.
The Complaint argues that the disputed domain name was registered by the Respondent on March 19, 2009, without the Complainant’s knowledge or permission. The Complainant contends that the disputed domain name is such that, even the slight change of spelling to “vellux” does not sufficiently distinguish it from the Complainant’s marks, hence the disputed domain name being confusingly similar to the Complainant’s trademarks. The absence of any basis, explanation or reason for the Respondent’s selection of the highly distinctive “vellux”, albeit slightly misspelled (with two “l”) trademark in the disputed domain name can give rise to the inference that the Respondent is seeking to attract Internet users for commercial gain to its site by means of this confusion and the Complaint is that accordingly the registration and use is in bad faith by the Respondent.
In support of its contentions, the Complainant relies upon two panel decisions, namely VKR Holding A/S v. Keyword Marketing Inc, WIPO Case No. D2008-0014 and VKR Holdings A/S v. Jeff Cyril, WIPO Case No. D2009-0939. In these cited decisions the Complainant was also the complainant in each instance. To the extent that the Complainant in this and the other two cases are the same, the Panel accepts that findings in the two cited decisions are neither binding upon, nor constitute any evidential matter against the Respondent, but to the extent that they are cited in support of matters of principle or the application thereof, it may be appropriate to refer thereto.
By its failure to respond, the Respondent is in default in terms of paragraphs 5(e) and 14 of the Rules, and paragraph 8(c) of the Supplemental Rules, with the result that the Panel must now deal with the matter on the Complaint.
6. Discussion and Findings
A. Substantive elements of the Policy
Paragraph 15(a) of the Rules requires that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) That the domain name registered by the respondent is identical or confusingly similar to a trademark or a service mark in which the complainant has rights.
(ii) That the respondent has no rights or legitimate interests in respect of the domain name.
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances or acts which would, for the purposes of paragraph 4(a(iii) above, be evidence of the registration of a domain name in bad faith. These are non-exclusive.
Similarly, paragraph 4(c) of the Policy sets out three illustrative circumstances which would demonstrate the respondent’s rights or legitimate interests in the domain name for the purpose of paragraph 4(a)(ii).
B. Effect of Default
Notwithstanding the fact that a respondent may be in default, the complainant bears the burden of proof in respect of each of the three main elements in terms of paragraph 4(a) of the Policy referred to above. Such default does not, per se, entitle the complainant to a finding in its favour by reason thereof, as failure by the complainant to discharge the burden of proof will still result in the complaint being denied (M Corentin Benoit Thiercelin v. CyberDeal Inc., WIPO Case No. D2010-0941). It follows that such default does not, of itself, constitute an acceptance or an admission of any of the averments or contentions put forward, or of the supporting evidence put up (Standard Innovation Corporation v. Shopintimates USA, WIPO Case No. D2011-0049). The Panel is nevertheless not bound to accept all that has been put up by the Complainant but must evaluate it as it stands (Brooke Bollela aka Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383); San Lameer (Pty) Ltd & Sanlam Ltd v. Atlantic Internet Services (Pty) Ltd., WIPO Case No. D2010-0551).
However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inference as it considers appropriate from the failure of a party to comply with the provisional requirement of the Rules (Allianz Compañia de Seguros y Reaseguros SA v. John Michael, WIPO Case No. D2009-0942).
In the present instance, the Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a response, particularly in the light of the fact that the Complainant wrote on several occasions to the Respondent, as did the Center when dealing with procedural matters and advising the Respondent of time limits, as against the Respondent’s failure entirely to respond to any such correspondence.
From this the Panel considers that it follows that it may accept that the Respondent does not deny the facts asserted and contentions made by the Complainant based on such facts (Reuters Ltd v. Global Net 2000 Inc., WIPO Case No. D2000-0441; LLCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons Inc v. Domain Contact, WIPO Case No. D2003-0094; Standard Innovation Corporation case supra).
Thus, in the view of the Panel, it may accept asserted facts that are not unreasonable, with the consequence that the Respondent will be subjected to inferences that flow naturally from the information provided by the Complainant (Reuters case supra; RX America LLC v. Matthew Smith, WIPO Case No. D2005-0540; Allianz case supra; Standard Innovation Corporation case supra).
C. Identical or Confusingly Similar
Documentation put up by the Complainant listing the trademarks registered is extensive in relation to various countries but does not reflect specific dates of registration of each trademark. The Complainant, however, has specifically asserted that the trademark VELUX has been used since 1941 and was first registered as a trademark in Denmark in 1942. Applying the principles set out above, the Panel is therefore satisfied that, in the absence of any challenge from the Respondent, it can accept and proceed on the basis that both use and initial registration of the trademark VELUX preceded any registration of the disputed domain name. Although not strictly necessary for purposes of the first element of the Policy, the existence of the relied-upon trademark is highly relevant to consideration of the question of bad faith registration under the third Policy element below.
As pointed out, however, the disputed domain name differs from the registered trademark in that the first portion thereof is spelt “vellux” (i.e. with two “l”) and with the addition of the letters “usa”. The fact that the disputed domain name incorporates the Complainant’s VELUX mark in toto is, in the view of the Panel, not only decisive but also sufficient to establish that the disputed domain name is identical or confusingly similar to the Complainant’s registered mark (Quixar Investments Inc v. Dennis Hoffman, WIPO Case No. D2000-0253; Yahoo! Inc v. Cupcake Patrol & John Zuccarini, WIPO Case No. D2000-0928; Universal City Studios Inc v. David Burns & Adam – 12.dot.com, WIPO Case No. D2001-0784; Experian Information Solutions Inc v. B P B Prumerica Travel (aka SFXB aka H Bousquet aka Brian Evans), WIPO Case No. D2002-0367; Société des Produits Nestlé SA v. Mustafa Yakin/Moniker Privacy Services ( WIPO Case No. D2008-0016; Media 24 Ltd v. Llewellyn Du Randt, WIPO Case No. D2009-0699; The South African Football Association v. Fairfield Tours (Pty) Ltd., WIPO Case No. D2009-0998).
The fact that the disputed domain name is not an exact repetition of the trademark does not alter the position at all, in the view of the Panel, as a misspelling would not have affected the significance of the disputed domain name for the purpose of comparison (Yahoo! Inc case supra; San Lameer (Pty) Ltd. case supra).
The addition of a specific top-level domain is not an element of distinctiveness but can be taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (Magnum Piering Inc v. The Mudjackers & Garwood S Wilson Sr., WIPO Case No. D2000-1515; Rollerblade Inc v. Chris McCrady, WIPO Case No. D2001-0429; Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382; Intuit Inc v. Nett Corp, WIPO Case No. D2005-1206; Bid Industrial Holdings v Craig Smith, WIPO Case No. D2009-1627). To the extent that the trademark relied upon by the Complainant is wholly included in the disputed domain name (save for the minor change in spelling), the addition thereafter of “.com” does not serve to distinguish the disputed domain name so as to remove any confusion (Uniroyal Engineered Products Inc v. Nauga Network Services, WIPO Case No. D2000-0503; Bid Industrial Holdings v. Craig Smith, WIPO Case No. D2009-1627).
These additions to the word mark of the Complainant do not, in any event, detract from the dominant portion of the disputed domain name, being “vellux” (the first part of the disputed domain name). Of course, incorporating the entire word mark of the registered trademark of the Complainant also reinforces the similarity and fact of confusion (Intuit Inc case supra and Bid Industrial Holdings case supra).
In the circumstances, the Panel is satisfied that the Complainant has established the first element in terms of paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, demonstrate its rights to or legitimate interests in the domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to target the trademark or service mark at issue.
Although paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the disputed domain name, once the Complainant establishes a prima facie case that none of the three circumstances establishing rights or legitimate interests applies, the burden of production of evidence on this factor shifts to the Respondent to rebut the prima facie showing, despite the overall burden of proof remaining upon the Complainant to prove each of the three elements of paragraph 4(a) of the Policy (Document Technologies Inc v. International Electronic Communications Inc, WIPO Case No. D2000-0270; Universal City Studios Inc case supra; San Lameer case supra).
By reason of its default, the Respondent has placed itself in a position that it has not assumed or attempted to discharge the burden of production of the necessary evidence to rebut any such prima facie case. Moreover, and for that matter, by not responding to correspondence, the Respondent has not even put forward or suggested (albeit informally) anything which might avail it in this regard and constitute an acceptable or exculpatory explanation therefore. The enquiry must therefore focus upon what is said by the Complainant in order to determine whether or not such a prima facie case has been established.
It follows, therefore, that the Respondent has no rights or legitimate interests to use the Complainant’s trademark in the disputed domain name. Any such unauthorised use for commercial purposes would violate the exclusive trademark rights enjoyed by the Complainant (Caesar’s World Inc & Park Place Entertainment Corporation v. Japan Nippon, WIPO Case No. D2004-0615; A T & T Corp v. Roman Abreu d/b/a Smart Talk Wireless, WIPO Case No. D2002-0605; America Online Inc v. Xianfeng Fu, WIPO Case No. D2000-1374; Sybase Inc v. Analytical Systems, WIPO Case No. D2004-0360).
Apart from there being no authorisation on the part of the Complainant, there is no relationship or association between the Complainant and the Respondent, whether by way of licence or otherwise, which also militates against the Respondent having any rights or legitimate interests in or other entitlement which might fall within that purview (Sybase Inc case supra; San Lameer case supra).
Further to the assertion by the Complainant that the disputed domain name was registered by the Respondent without its knowledge or permission, it has put up four letters written to the Respondent on April 7, 2009, August 25, 2010, May 16, 2011 and November 15, 2011, wherein it draws to the attention of the Respondent that it (the Complainant) is the owner of the well known registered trademark VELLUX and had recently learnt of the registration of the disputed domain name. The Complainant went on to point out in those letters that it did not, as a general rule, allow third parties to acquire intellectual property rights incorporating its trademarks and that the disputed domain name was being used for web-portal activities, such activities constituting illegal commercial use of the trademark. It then proceeded to call upon the Respondent to sign over the disputed domain name, warning it that, if this request was not acceded to, the Complainant would have to submit the matter to the Center for proceedings according to uniform dispute resolution.
In view of the fact that the Respondent has not responded thereto, and in light of the above, it is quite clear to the Panel on this evidence that the Respondent has no rights or legitimate interests over the disputed domain name.
Moreover, the Respondent has, in its website, referred to certain products of the Complainant and, by incorporating them into its own website, is thereby seeking to suggest that there is a connection or association between the Respondent and the Complainant where there is not (Forte (UK) Ltd v. Eugenio Ceschel, WIPO Case No. D2000-0283; Standard Innovation Corporation case supra).
In view of the facts and circumstances put up on this ground and which are unchallenged, the Panel is of the view that the Complainant should therefore succeed on this ground as well.
The Panel is therefore satisfied that, in the circumstances, the Complainant has established the second element in terms of paragraph 4(a)(ii) of the Policy.
E. Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides some guidance on this question. It provides:
“For the purposes of paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
Whilst bad faith can exist where a domain name contains in its entirety a complainant’s trademark, the Panel does not see that this principle cannot also apply where the dominant feature of the trademark of the Complainant and where the whole trademark, even with a minor misspelling, has been so incorporated (Standard Innovation Corporation case supra).
Moreover, with particular regard to paragraph (iv) of the Policy quoted above, the Respondent has made the misleading representations in its website by incorporating reference to certain of the Complainant’s products, thereby suggesting that it either has a relationship with the Complainant or does so with the approval or endorsement of it and markets certain of its products pursuant thereto. Significantly, in referring to these products on its website, the Respondent refers to them by identifying them as “Velux” and not by using the changed spelling of “Vellux” which the Panel considers to be a self-standing act of bad faith (San Lameer case supra).
The implication arising from the website, in the mind of a would-be customer, is therefore clearly that the website is either of or in some way associated with the Complainant, which in turn, in the view of the Panel, leads to the inescapable conclusion that such potential customer is invited to do business with either the Complainant itself or someone authorised on its behalf in relation to its goods. That would, by application of paragraph 4(b)(iv) of the Policy, constitute bad faith (Media 24 Ltd case supra; San Lameer case supra; Standard Innovation Corporation case supra).
Moreover, by use of the Complainant’s trademark in the disputed domain name, the Respondent is trading on the value established by the Complainant in its marks, to attract users and thereby derive economic benefit from either those users attracted to the Respondent’s website or by receiving compensation from others, if these would-be customers are routed elsewhere. Such a practice would also constitute bad faith (Yahoo Inc & GeoCities v. DataArt Corp, Data Art Enterprises Inc, Stonybrook Investments, Global Net 2000 Inc, Powerclick Inc and Yahoo Search Inc, WIPO Case No. D2000-5087; VKR Holdings A/S v. Jeff Cyril case supra; Standard Innovation Corporation case supra).
The selection of a domain name identical or confusingly similar to the Complainant’s and the Complainant’s domain names, particularly in the absence of any explanation, leads to the conclusion, in the view of the Panel, that the Respondent must have known of the reputation of the Complainant in the market and therefore it selected the disputed domain name in circumstances where it was very well aware of the Complainant’s reputation and intended to benefit therefrom (Deutsche Post AG v. MallMIJ LLC, WIPO Case No. D2003-0128; Standard Innovation Corporation case supra).
The Panel is therefore satisfied that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <velluxusa.com> be transferred to the Complainant.
Archibald Findlay SC
Dated: February 27, 2012