WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Hendra 77/ Fisher price babyschaukel
Case No. D2013-1553
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, internally represented.
The Respondent is Hendra 77/ Fisher price babyschaukel of Yogyakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name <veluxdachfensterpreise.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2013, the Registrar 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 September 12, 2013 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 September 19, 2013.
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 September 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2013. On October 14, 2013, the Complainant requested the Center to suspend the proceedings in order to try to reach a settlement between the parties. On November 14, 2013, the Complainant requested the re-institution of the proceedings and the Center re-instituted the proceedings on November 15, 2013.
The Center appointed Daniel Peña as the sole panelist in this matter on November 20, 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 Complainant is a company incorporated under the laws of Denmark.
The Complainant is the owner of the worldwide manufacturer of roof windows and accessories, the VELUX Group.
The Complainant has since 1941 continuously carried on business as a designer and manufacturer of its VELUX roof windows and other products.
The Complainant 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 has also registered the trademark VELUX in Indonesia and numerous other countries.
The Complainant directs its marketing effort towards professional users, including their advisers and dealers in building materials, as well as towards end users, including home owners.
The Complainant's marketing activities include the distribution of product catalogues, advertising, television commercials and sponsorship, such as the VELUX 5 Oceans, which is a single-handed yacht race across the 5 oceans of the world.
The disputed domain name <veluxdachfensterpreise.com> was registered by the Respondent on February 15, 2013.
The Respondent is using the disputed domain name for his own website marketing the Complainant’s products as the main product category.
The Respondent also markets different branded products on the site which are competitive products to the Complainant. An example is the “eXsun Sonnenschutz” which matches VELUX roof windows. This is a competing product to the VELUX blinds.
The Respondent is not part of the Complainant’s dealer network nor is he an installer authorized or known by the Complainant.
The Respondent was first notified of the Complainant’s objections by letter dated March 20, 2013, approximately one month after the registration which was followed up by an e-mail dated April 30, 2013. The Respondent has never reacted or responded to the Complainant’s letter or e-mail.
5. Parties’ Contentions
Through an intensive marketing effort, the trademark VELUX has acquired a global reputation.
The Complainant has a significant turnover relating to sale of the VELUX roof windows, blinds and other products.
The Complainant intensively markets VELUX roof windows and incurs substantial marketing costs
associated with such marketing in numerous countries worldwide.
The distinctive element of the disputed domain name is the word “velux” which is identical to the Complainant’s registered trademark VELUX in which the Complainant has extensive rights, reputation, and goodwill.
The Complainant believes that its industrial property rights were well-known to the Respondent long before the registration of the disputed domain name and that the Respondent was well aware of those rights at the time of registration of the disputed domain name <veluxdachfensterpreise.com> especially given the selection of suffixes chosen in German by the Respondent as these are related to the products of the Complainant (i.e. “dachfenster” in English “roof windows” and “preise” in English “price”). The word VELUX used in combination with these suffixes are likely to be used by consumers searching for information about the Complainant’s products.
The Complainant can see no legitimate or fair use of the disputed domain name.
The Respondent’s purpose of using the word VELUX in the disputed domain name is to attract customers to its website and generate revenue for the Respondent. Accordingly, the Respondent’s use of the disputed domain name is clearly commercial.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant submits that, by using the disputed domain name, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website which resolves from the disputed domain name. This is achieved by creating a likelihood of confusion with the Complainant's trademarks and effectively hijacking part of the Complainant's natural traffic in order to generate additional revenue for the Respondent, whom is not only promoting the Respondent´s products on the website but also products from the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
The Complainant has clearly shown that it has rights in the VELUX trademarks registered in several countries including Denmark, its original place of business, and Indonesia, where the Respondent is located.
The disputed domain name incorporates the whole of the trademark VELUX to which there were added the German expression “dachfensterpreise” as well as the generic top level domain “.com” (gTLD). The Panel considers that the addition of these terms and gTLD suffix does not eliminate the confusing similarity between the Complainant’s VELUX Trademark and the disputed domain name. The similarity is enhanced as a result that the suffixes chosen by the Respondent “dachfenster” and “preise”, meaning “roof windows” and “prices” in English, are related to the products of the Complainant.
The Panel finds that the Complainant has rights in the trademark VELUX and the disputed domain name is confusingly similar to this trademark.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use its VELUX trademark or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant’s marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s web site or location or of a product or service on its website or location.
The Panel considers that the disputed domain name <veluxdachfensterpreise.com> was registered with the knowledge of the Complainant’s rights in the trademark VELUX, as it seemed that the Respondent was aware of the Complainant’s rights in the trademark VELUX. In fact, the Respondent through its website is using the disputed domain name for marketing the Complainant’s products as the main product category. The Respondent also markets different branded products through links on the site which are competitive products to the Complainant. Furthermore, the Complainant has demonstrated that its trademarks are well-known in Denmark and worldwide. Therefore, the choice of the disputed domain name <veluxdachfensterpreise.com>, which wholly incorporates the trademark VELUX, cannot be a coincidence. The term “velux” is not a descriptive or generic expression.
Concerning the use of the disputed domain name <veluxdachfensterpreise.com>, in this Panel’s view, the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the trademark VELUX in the disputed domain name, throughout the website connected to the disputed domain name and attempts to attract consumers for commercial gain by purporting to sell the Complainant’s products as well as some goods of Complainant´s competitors.
It is clear to this Panel that the Respondent is using the trademark VELUX as part of the disputed domain name <veluxdachfensterpreise.com> to create the impression that it has a commercial relationship with the Complainant’s business, in particular by damaging the Complainant’s reputation, as a result of consumers visiting the Respondent’s website thinking that it was related to the Complainant or its business.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 <veluxdachfensterpreise.com> be transferred to the Complainant.
Date: December 4, 2013