WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Philippe Boyer, The French Boutique
Case No. D2012-0775
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by MAQS Law Firm, Denmark.
The Respondent is Philippe Boyer, The French Boutique of Bristol, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <velux-nancy.com> is registered with Online SAS.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2012. On April 16, 19 and 20, 2012, the Center transmitted by email to Online SAS a request for registrar verification in connection with the disputed domain name. On April 20, 2012, Online SAS transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
Having noticed that the disputed domain name was to expire on May 2, 2012, and upon invitation from the Center to comment upon such expiration, Online SAS confirmed on April 30, 2012 that the disputed domain name had been renewed for one year.
The Center verified that the 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 April 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 14, 2012.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on May 21, 2012. 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 limited 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 several Community Trademarks as well as local trademarks registered in the United Kingdom (since 1950 for the first trademark registration in that country) where the Respondent is domiciled.
The Respondent registered the disputed domain name <velux-nancy.com> on May 2, 2010. As of the time the Complaint was filed, the disputed domain name was linked to a website where the Respondent offered services pertaining to renovation work, in particular as to windows.
On January 16, 2012, the Complainant sent a cease and desist letter to the Respondent, drawing its attention upon its trademarks VELUX and inviting it to transfer the disputed domain name in its favor by January 23, 2012. Having not heard from the Respondent, the Complainant sent a reminder on January 26, 2012, to which the Respondent did not respond either.
5. Parties’ Contentions
The Complainant first alleges that there exists confusing similarity between its trademarks VELUX and the disputed domain name, since the suffix “nancy” is a city name referred to in the contact details on the Respondent’s website that does not exclude the confusing similarity.
Second, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a reseller of VELUX products, but a mere installer that would not even sell products under the VELUX trademark. The Respondent has no relation with the Complainant and cannot claim any rights or legitimate interests in the disputed domain name.
Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. The Respondent did not respond to the cease and desist letters and went on using the disputed domain name after having had its attention drawn upon the Complainant’s objection to that effect. The activities promoted on the Respondent’s website bear no connection whatsoever with the Complainant. By using the Complainant’s trademark, the Respondent takes unfair advantage of the Complainant’s reputation, by suggesting that the disputed domain name and linked website would be operated or endorsed by the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous verbal trademarks throughout the world consisting of the word “velux”, including in the United Kingdom where the Respondent is domiciled. There is no doubt in the Panel’s opinion that the VELUX mark having been used since 1942 enjoys a wide reputation and can be considered a well-known trademark under Art. 16.3 of the TRIPS Agreement, respectively Art. 6bis of the Paris Convention in the United Kingdom where the Respondent is domiciled.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a geographical term such as “nancy” is merely descriptive and does not exclude the likelihood of confusion (see, among others: Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, it rather strengthens the likelihood of confusion by making Internet users mistakenly believe that the website might be the Complainant’s official website in the area of Nancy in France.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case the Complainant is the owner of numerous VELUX trademarks. The Complainant has no business or other relationships with the Respondent and the Respondent does not claim to be a reseller or an official distributor of the Complainant’s VELUX products.
Even then, the Respondent would find it hard to demonstrate that he has any rights or legitimate interests in the disputed domain name. Following Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a majority of the panels rightfully holds that, for a reseller to be entitled to claim a legitimate interest (namely a bona fide offering of goods or services) in respect of a domain name consisting in whole or in part of the manufacturer’s trademark, certain requirements have to be fulfilled: “[…]. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark” (see WIPO Overview 2.0, paragraph 2.3).
These requirements are not fulfilled in the present case and the Respondent having decided not to respond did not prove the contrary.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. Considering the absence of a Response, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Complainant is the owner of numerous VELUX trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the VELUX mark and the activities arguably carried out in the same industry by the Respondent, it is unconceivable that the Respondent would have chosen and registered the disputed domain name <velux-nancy.com> in good faith, without having been aware of the VELUX trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel’s opinion that the Respondent was very well aware of the Complainant’s trademarks, and that the disputed domain name has been registered, and is being used to attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondent’s website is linked to the Complainant.
Consequently, the Panel is of the opinion that the disputed domain name <velux-nancy.com> has been registered and is being used in bad faith under paragraph 4(a)(iii) and 4(b)(iv) of the Policy.
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 <velux-nancy.com> be transferred to the Complainant.
Dated: May 22, 2012