WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Gao Ling Xin
Case No. D2014-0235
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
The Respondent is Gao Ling Xin of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <veluxlight.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2014. On February 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 24, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On February 25, 2014, the Complainant confirmed its request included in the Complaint that English be the language of the proceeding. The Respondent submitted a request that Chinese be the language of the proceeding on February 25, 2014.
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 in both English and Chinese, and the proceeding commenced on March 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2014. The Response was filed with the Center on March 7, 2014 in Chinese.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on March 12, 2014. 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 in Denmark and the owner of numerous registrations worldwide (including in China) for the trade mark VELUX (the “Trade Mark”), the earliest registration (in Denmark) dating from 1942.
The Respondent is an individual based in China.
C. The Disputed Domain Name
The disputed domain name was registered on April 15, 2013.
D. The Website at the Disputed Domain Name
The website at the disputed domain name (the “Website”) offers for sale various LED lighting products.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint.
The Complainant has since 1941 continuously carried on business as a designer and manufacturer of roof windows and accessories, including electric light kits for roof windows, sold under the Trade Mark. The Complainant has a presence in some 40 countries throughout the world, and sells in approximately 90 countries. The Trade Mark is a well-known trade mark.
The disputed domain name is confusingly similar to the Trade Mark. It comprises the Trade Mark in its entirety, together with the non-distinctive word “light”, a word which is descriptive of the Complainant’s products and is used by the Complainant in the advertising for its products.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with or authorised by the Complainant in any way and is not commonly known by the disputed domain name. The Respondent has failed to respond to the Complainant’s cease and desist letters which were sent to the email address listed on the Website.
The disputed domain name has been registered and used in bad faith. It has been used in respect of the Website, which offers for sale various LED lighting products. The Respondent is using the disputed domain name and the Website in order to attract Internet users for commercial gain, by way of initial interest confusion. It is also foreseeable that Internet users might confuse the Website for a website of an entity which is part of the Complainant’s dealer network, or a website authorised by the Complainant.
The Respondent made the following submissions in the Response.
The Respondent is in the LED lighting business, which is entirely different to the Complainant’s roof window business. Potential customers are clearly able to tell the difference between the two companies.
Upon receipt of the Complainant’s cease and desist letters, the Respondent changed the colour and font of the trade marks used on the Website to green and black. The logo used by the Complainant is red.
The Respondent’s use of VELUX is derived from VENUS, which is highly appropriate for a “rising star” in the lighting industry such as the Respondent.
The Trade Mark is not a well-known mark in the lighting industry.
The Respondent has happy customers in the United Kingdom, the Netherlands, Taiwan Province of China, the United States of America and other countries. The Respondent has only ever registered and used the disputed domain name in respect of its LED lighting products and has never received any complaints from its customers or business partners in relation to its use of the disputed domain name.
For all of these reasons, the disputed domain name is not confusingly similar to the Trade Mark, the Respondent has rights and legitimate interests in the disputed domain name, and the disputed domain name has not been registered and used in bad faith.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
1. The Complainant has no knowledge of Chinese and it would be unreasonably costly for the Complainant to translate the Complaint and its correspondence in this proceeding into Chinese;
2. The Website is predominantly in English and Chinese, although it is also available in 9 other languages;
3. The Respondent is marketing and selling its products outside China. According to the company profile on the Website, the European Union (“EU”) market is especially important to the Respondent. The Respondent claims to have many customers in the United Kingdom, the Netherlands and Austria. The Respondent also claims that all its designs fully follow EU electrical safety standards; and
4. All of this provides strong evidence that the Respondent is familiar with the English language and would be able to safeguard the Respondent’s interests if the proceeding were to be conducted in English.
The Respondent has requested that Chinese be the language of the proceeding for the following reasons:
1. The Respondent strongly objects to the use of English as the language of the proceeding as the language of the registration agreement for the disputed domain name is Chinese;
2. The logo used by the Respondent is different to the logo used by the Complainant; and
3. The products of the Respondent are completely different to the Complainant’s products, and the filing of the Complaint is therefore vexatious.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that, in the interests in particular of reducing the costs of both parties and ensuring, consistent with the Policy, that the proceeding is determined in a timely manner, it will:
1. Accept the filing of the Complaint in English;
2. Accept the filing of the Response in Chinese; and
3. Render the Decision in English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predates the date of registration of the disputed domain name by over 60 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to a domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253). The mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The disputed domain name contains the Trade Mark in its entirety. The Panel concludes that the use of the generic word “light” does not serve to distinguish the disputed domain name from the Trade Mark in any significant way. The word “light” is descriptive of the nature of both parties’ products and is also a word used by both parties in advertising for their products.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) Before any notice to the respondent of the dispute, the respondent’s 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) The respondent (as an individual, business, or other organisation) has been commonly known by the domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 60 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has failed to show that it has acquired any relevant registered trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, which has not been authorised by the Complainant, which features the Trade Mark both in the VeLUXLight logo used by the Respondent, and in the corporate name Velux Light Co Ltd featured prominently on the Website.
There is no disclaimer of any relationship with the Complainant on the Website. The Respondent has filed limited evidence which suggests it has sold LED lighting products recently in the United Kingdom and in Taiwan Province of China, but none of the evidence filed contains direct evidence of use of any relevant trade marks.
In all the circumstances of this case, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
The Panel finds the Respondent’s claim to have chosen VELUX to represent VENUS unconvincing. The Panel further rejects the Respondent’s contention that roof windows and associated products are entirely unrelated to LED lighting products. The Panel notes that, conceptually, roof windows are used to improve indoor lighting through allowing natural light into residences and buildings. The Panel also notes that the Complainant uses the concept of light and various slogans comprising the word “light” prominently in the advertising for its products. Furthermore, the Panel notes the Complainant also manufactures and sells lighting accessories for its roof window products.
In all the circumstances, therefore, the Panel finds that the more reasonable conclusion to be drawn is that the Respondent must have been aware of the Complainant and of the Complainant’s Trade Mark when it chose to register and use the disputed domain name.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use of a domain name in bad faith on the part of a respondent:
By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
For the reasons specified in the discussion under the second limb of paragraph 4(a) of the Policy above, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith in order to (1) capitalise on initial interest confusion; and (2) attract, for commercial gain, Internet users to the Website, who might be confused into believing that the Website and the Respondent’s business is in some way affiliated with or authorised by the Complainant, contrary to the fact.
For the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <veluxlight.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: March 26, 2014