WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Andrew J Hooper, A J Hooper
Case No. D2016-1496
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Hewitsons LLP, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Andrew J Hooper, A J Hooper of Broxbourne, Hertfordshire, United Kingdom, self‑represented.
2. The Domain Names and Registrars
The disputed domain name <veluxglazing.com> is registered with Mesh Digital Limited. The disputed domain name <velux.london> is registered with Host Europe Group (collectively the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 25, 2016. On July 25, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 26, 2016, the Registrars 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" 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 July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Center received informal communications from the Respondent on July 28, 2016, and on August 14, 2016. The Respondent did not file a formal Response.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 24, 2016. 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 manufacturer of roof windows and accessories and has a presence in some 40 countries throughout the world, and sells in approximately 90 countries. The trademark VELUX has been used since 1941 and was first registered as a trademark in Denmark in 1942.
The Complainant owns 450 trademarks incorporating the term "velux" worldwide, including the following trademark registrations which are valid in the United Kingdom:
- United Kingdom national trademark registration no. 691115 VELUX, registered since July 28, 1950 for goods in classes 6 and 19, including building materials, windows and window fittings;
- European Union trademark no. 955609 VELUX, registered since March 31, 2000 for goods in classes 6, 7, 9 and 11;
- European Union trademark no. 651869 VELUX, registered since July 16, 2004 for goods and services in classes 6, 9, 16, 19, 20, 22, 24, 37, 41 and 42, including building constructions, roofing and glazing;
(the "VELUX Trademark").
The disputed domain name <veluxglazing.com> was registered by the Respondent on November 6, 2013 and the disputed domain name <velux.london> was registered by the Respondent on July 21, 2015. Both disputed domain names resolve to a website which advertises the Respondent's business.
5. Parties' Contentions
The Complainant alleges that the VELUX Trademark became a household name as a result of large scale advertising and is recognized by a substantial portion of the population of the United Kingdom. The Complainant contents that the disputed domain names are identical or confusingly similar to the VELUX Trademark because both disputed domain names incorporate the VELUX Trademark in its entirely and disputed domain name <veluxglazing.com> only adds the word "glazing" to the VELUX Trademark, which word is purely descriptive of the services being promoted.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names, because the Respondent registered the disputed domain names without knowledge or consent from the Complainant. The disputed domain names resolve to a website "www.homeroofing.co.uk", which is also owned by the Respondent. The Respondent uses the disputed domain names to redirect Internet users to his website which advertises and promotes his own business for roof repair, installation of roof windows, replacement of roof windows and glazing services. According to the Complainant the Respondent was well aware of the Complainant and the VELUX Trademark when he registered the disputed domain names, as his website makes frequent reference to the Complainant's products. The Respondent was also involved in domain name disputes before the registry for the ".uk" country code Top-Level Domain ("TLD") Nominet, in 2011 in connection to the registration of the domain names <veluxfitters.co.uk>, <veluxglazing.co.uk> and <veluxinstaller.co.uk>, and in 2016 in connections with the domain name <veluxservicing.co.uk>, which registrations were all found to be abusive. The Respondent is also not commonly known by the disputed domain names as the Complainant found the Respondent's business to be known as "Home Roofers" and/ or "Roofing & Roof Windows Installers and Fitters". The Complainant also asserts that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names because the Respondent uses the disputed domain names to link to a website which commercially advertises and promotes the Respondent's business.
Finally, the Complainant alleges that the disputed domain names were registered and are being used in bad faith, since the Respondent intentionally attempts to attract, for commercial gain, Internet users to his website which frequently uses the VELUX Trademark and other registered trademarks of the Complainant so that visitors may wrongfully believe that the Respondent is affiliated with, or endorsed by or otherwise connected to the Complainant.
The Respondent sent two emails to the Center. His email of July 28, 2016 read "Hi Tom, You boys never even thought about the installing aspect until you looked at my web page 10 years ago, shame on you". On August 14, 2016 the Respondent sent another message to the Center in which he stated "I have a couple of domain names with the word Velux in VeluxGlazing.com and Velux.London the area I live and work. I direct these to my website www.HomeRoofing.co.uk and they help people find me as I offer installing, repairing & replacing Glazing units, people I carry out work for are fully aware I don't work or pretend to be part of Velux only offer a service they don't and never have offered, in fact that is not strictly true about 7-8 years ago I had VeluxInstallers.co.uk a service at the time they did not offer. Velux discovered this and shortly after taking it from me set up there Velux Installer Partnership".
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
A. the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
C. the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
It is well established that the TLD may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In comparing the disputed domain names with the VELUX Trademark, the Panel shall therefore ignore the TLDs ".com" and ".london".
While disregarding the TLD, the Panel finds that the disputed domain name <velux.london> is identical to the VELUX Trademark. With respect to disputed domain name <veluxglazing.com> the Respondent has taken the VELUX Trademark in its entirety and merely added the descriptive word "glazing". The added word is insufficient to differentiate the disputed domain name and the VELUX Trademark, and may even encourage – and therefore confuse – Internet users to believe that the website under the disputed domain name provides information on the Complainant's glazing products and services.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which the Respondent may rebut (see e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Complainant alleged that the Respondent is not commonly known by the disputed domain names, which the Respondent has not challenged. Further, the disputed domain names resolve to the Respondent's website which, in the Respondent's own words "help people find me as I offer installing, repairing & replacing glazing units." The Panel does not consider the Respondent's use of the disputed domain names for offering goods or services as bona fide, as the Respondent's website does not restrict itself to offering the Complainant's products, but rather also offers the Respondent's own products and/or services.
The Panel is therefore satisfied that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names and the second element of paragraph 4(a) of the Policy is also met.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service offered on the respondent's website or location.
In the Panel's view it is obvious that at the time the Respondent registered the disputed domain names in 2013 and 2015 he must have had the VELUX Trademark in mind, as the Panel is satisfied that the VELUX Trademark had a reputation at that time and the Respondent had registered the domain names <veluxfitters.co.uk>, <veluxglazing.co.uk> and <veluxinstaller.co.uk>, which domain names also entirely included the VELUX Trademark, which were found abusively registered by the expert in VKR Holding A/S v. A J HOOPER, Nominet Case No. D00010029. The Panel is therefore satisfied that the Respondent registered the disputed domain names in bad faith.
The Panel is further satisfied that the use which the Respondent makes of the disputed domain names to attract Internet users for the Respondent's commercial gain constitutes use of the disputed domain name in bad faith. As this is the third domain name case where the Respondent was found to have registered domain names in order to prevent the owner of the trademark mark from reflecting the mark in a corresponding domain name1 the Panel finds that the Respondent also demonstrated a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name as forbidden by paragraph 4(b)(ii) of the Policy. The Panel also finds bad faith pursuant to paragraph 4(b)(iv) of the Policy.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <veluxglazing.com> and <velux.london> be transferred to the Complainant.
Date: September 5, 2016
1 Nominet Case No. D00010029, ibid. and VKR Holding A/S v. A J HOOPER, Nominet Case No. D00017185