WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Lofts Direct Ltd / Domains by Proxy, LLC
Case No. D2012-2538
1. The Parties
Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
Respondent is Lofts Direct Ltd / Domains by Proxy, LLC of Brentwood, United Kingdom of Great Britain and Northern Ireland and Scottsdale, Arizona, United States of America, respectively1.
2. The Domain Names and Registrar
The disputed domain names <veluxblind.com> and <veluxconversion.com> are registered with eNom, the disputed domain name <veluxloft.com> is registered with GoDaddy.com, LLC (collectively the “Registrars”).
3. Procedural History
A complaint regarding the disputed domain names <veluxblind.com> and <veluxconversion.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2012. Another complaint regarding the disputed domain name <veluxloft.com> was filed with the Center on December 27, 2012. On December 21 and 27, 2012, the Center transmitted by email to the Registrars requests for registrar verification in connection with the disputed domain names. On December 21 and 27, 2012, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the complaints.
The Center sent an email communication to Complainant on January 8, 2013, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to amend its complaints. Complainant filed an amended Complaint and requested that the disputed domain names be consolidated in a single proceeding and that its complaint filed on December 21, 2012 be withdrawn. On January 16, 2013, the Center notified the parties that Complainant’s consolidation request had been accepted and that the proceeding regarding the complaint filed on December 21, 2012 had been discontinued.
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 Respondent of the Complaint, and the proceedings commenced on January 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 6, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 7, 2013.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 13, 2013. 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 disputed domain name <veluxblind.com> was registered on April 21, 2012; it redirects to a website at “www.veluxblind.com” which provides, among others, for various online ads relating to roof windows and blinds.
The disputed domain name <veluxconversion.com> was registered on May 5, 2012 and redirects to a website at “www.veluxconversion.com” which again displays a variety of online ads.
Finally, the disputed domain name <veluxloft.com> was registered on June 27, 2012 and redirects to a website at “www.veluxloft.com” which advertises the supply as well as the fitting of “Velux roofs”.
Complainant has provided written evidence that it has sent to Respondent various pre-procedural cease and desist requests, e.g. an email dated August 15, 2012 relating to the disputed domain names <veluxblind.com> and <veluxconversion.com> (followed by a reminder e-mail of September 27, 2012) as well as a postal mail dated September 24, 2012 relating to the disputed domain name <veluxloft.com>.
Complainant requests the disputed domain names to be transferred to Complainant.
5. Parties’ Contentions
Complainant alleges to be the owner of the Velux Group, a world-wide manufacturer of roof windows and accessories with legal domicile in Denmark. Complainant claims that since 1941 it has continuously carried on business as a designer and manufacturer of Velux roof windows with a presence in some 40 countries and sales in approximately 90 countries world-wide. Complainant has submitted a self-compiled data list of some hundred word marks and word-/design marks relating to the VELUX brand in which Complainant claims to have ownership. Complainant argues that by means of intensive marketing efforts (such as the distribution of product catalogues, advertising, television commercials and sponsorship), the VELUX trademark has meanwhile acquired reputation throughout the United States and numerous countries world-wide.
According to Complainant’s contentions, the VELUX trademark has been in use already since 1941 and was first registered as a trademark in Denmark in 1942.
Complainant contents that the disputed domain names are confusingly similar to its VELUX trademark, because (1) “Velux” is the distinctive element of all of the disputed domain names, which is identical with Complainant’s VELUX trademark and (2) the suffixes “blind”, “conversion” as well as “loft” are all commonly used English words and are often used in connection with roof windows sold by Complainant and, therefore, cause a link to Complainant’s business rather than to distinguish Respondent’s business therefrom to a sufficient extent. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain names, because (1) Respondent is neither part of Complainant’s dealer network nor is it an installer authorized or known by Complainant, (2) given the suffixes chosen by Respondent which closely relate to Complainants products, Complainant believes that Respondent was well aware of Complainant’s rights in the VELUX trademark on or before the registration of the disputed domain names and (3) Respondent’s purpose of using the designation “Velux” in the disputed domain names obviously is to attract customers to its website and to generate revenue for Respondent, thus Respondent’s use of the disputed domain names is clearly commercial.
Finally, Complainant asserts that the disputed domain names were registered and are being used in bad faith, since (1) potential customers of Complainant may visit Respondent’s websites under the confusingly similar disputed domain names and be lead to believe that Respondent is a dealer of Velux products as part of the Velux dealer network and/or an installer authorized by Complainant, thus, Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademark and effectively hijacking part of Complainant’s natural Internet traffic in order to generate additional revenue for Respondent, (2) Respondent’s websites are likely to cause damage to Complainant as a result of reduced Internet traffic to Complainant’s own websites and, ultimately, lost sales and thereby a disruption of Complainant’s business, and (3) Respondent never reacted or responded to any of Complainant’s cease and desist letters.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint.
A. Identical or Confusingly Similar
The Panel is sufficiently convinced that Complainant owns rights in the VELUX trademark. Although Complainant has not submitted excerpts from official trademark registers (WIPO, OHIM, USPTO etc.), the Panel has undertaken a deliberate online research within its general powers granted by paragraph 10 of the Rules to confirm the accuracy and reliability of the information provided in Complainant’s self-compiled data list of alleged registered VELUX trademarks; the Panel has also taken into account that Complainant’s contentions remained undisputed by Respondent.
The Panel further concludes that the disputed domain names <veluxblind.com>, <veluxconversion.com> and <veluxloft.com> are confusingly similar to the VELUX trademark. The disputed domain names all incorporate the VELUX trademark in its entirety. It has been held in numerous UDRP decisions and has meanwhile become a consensus view among panelists (see WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9) that the addition of a generic or descriptive term or geographical wording to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic terms “blind”, “conversion” and “loft” (which even refer to Complainant’s core business) is not capable to dispel the confusing similarity arising from the incorporation of Complainants’ VELUX trademark into the disputed domain names.
Therefore, the first element under the Policy as set forth by paragraph 4(a)(i) in the case at hand is fulfilled.
B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent made a legitimate, noncommercial or fair use without intent for commercial gain.
Complainant has produced evidence that the disputed domain names redirect to websites at “www.veluxblind.com”, “www.veluxconversion.com” and “www.veluxloft.com”, which obviously refer to Complainant’s Velux products, but at the same time are designed to promote Respondent’s own “loft business”. The Panel notes that Respondent chose to register a total of three disputed domain names, all of which combine the VELUX trademark with a suffix that somehow relates to Complainant’s core business, even though Respondent apparently neither is an authorized dealer nor an installer of Complainant’s Velux products. Respondent’s websites at “www.veluxblind.com”, “www.veluxconversion.com” and “www.veluxloft.com” further include various online ads, which are not at all specifically tailored to Complainant, but redirect, inter alia, to products in (at least partial) competition with those of Complainant.
The Panel, therefore, concludes that Respondent – irrespective of the alleged reputation of the VELUX trademark – apparently must have been aware of said trademark at the time of the registration of the disputed domain names and that the latter obviously allude to Complainant’s trademark and business. Such use of the disputed domain names to redirect Internet users, who are trying to reach Complainant but due to the confusing similarity of the disputed domain names with Complainant’s VELUX trademark end up with Respondent’s Internet presence at “www.veluxblind.com”, “www.veluxconversion.com” and “www.veluxloft.com”, is neither “noncommercial” because it was predominantly for the purpose of generating own revenues, nor it is “fair” because Internet users by confusion are brought to a website with information about a variety of matters that are not specifically tailored to Complainant.
Moreover, such use of the disputed domain names is also not fulfilling the requirements of a bona fide offering of goods or services, because (1) Respondent obviously has neither been authorized to use Complainant’s VELUX trademark as a domain name or on Respondent’s website or in any other way, (2) Respondent’s name apparently does not correspond to Complainant’s VELUX trademark nor is any other reasonable explanation apparent why Respondent should rely on the designation “Velux” as it is contained in the disputed domain names, and (3) Respondent does not accurately discloses its relationship with Complainant on the websites associated with the disputed domain names.
Finally, therefore, such use of the disputed domain names may neither be deemed legitimate nor noncommercial nor fair. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on January 17, 2013 nor did Respondent come forward with any other arguments that would have explained Respondent’s (business) activities and, thus, Respondent’s possible rights or legitimate interests in the disputed domain names.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and thus the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain names, which are confusingly similar to Complainant’s VELUX trademark, to websites in order to generate revenues by Respondent (either by “pay-per-click” or by promoting Respondent’s own “loft business”) without Complainant’s permission to do so is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s VELUX trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. Such circumstance shall be evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent not only made use of a privacy service in order to conceal its true identity, but that Respondent kept silent on all of Complainant’s contentions as they were included in the Complaint as well as in various pre-procedural attempts of Complainant to contact Respondent. These facts taken all together throw a light on Respondent’s behavior which at least supports the finding of a registration and use of the disputed domain names in bad faith.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 names <veluxblind.com>, <veluxconversion.com> and <veluxloft.com> be transferred to Complainant.
Stephanie G. Hartung
Date: February 26, 2013
1 It appears from the case file that Domains by Proxy, LLC is a privacy protection service and that Lofts Direct Ltd is the underlying registrant of the disputed domain names. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.