WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Wang Liqun
Case No. D2014-1557
1. The Parties
Complainant is VKR Holding A/S of Horsholm, Denmark, represented internally.
Respondent is Wang Liqun of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <velux-usa.com> is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 8, 2014.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on October 14, 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
Complainant is a company incorporated in Denmark which since 1941 is the designer and manufacturer of roof windows and related accessories, currently sold under the VELUX trademark in around 90 countries. Said accessories include several electric light kits for the VELUX products.
The VELUX trademark was first registered in Denmark in 1942 and Complainant owns a number of trademark registrations for the VELUX trademark around the world, including the United States Registration No. 76406627, dated August 2, 2005, and the China Registration No. 11227003, dated December 14, 2013.
The disputed domain name was registered with the Registrar on May 17, 2011.
5. Parties' Contentions
Complainant argues that the disputed domain name is confusingly similar to Complainant's VELUX trademark because (i) the distinctive element of the disputed domain name is the VELUX trademark, and (ii) the suffix "usa" causes a link to Complainant's sales offices in the United States of America, whose official website is "www.veluxusa.com". Complainant relies on previous Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, to argue that the difference between the disputed domain name and Complainant's trademark constitutes a minor variation that does not detract from the close similarity between them.
Complainant further contends that Respondent does not have rights or legitimate interests regarding the disputed domain name because (i) Respondent registered the disputed domain name without Complainant's knowledge or permission; (ii) Complainant sent two cease and desist letters to the registrant demanding the transfer of the disputed domain name but no response was ever received; (iii) Respondent has allowed Sedo to add a parked site on the disputed domain name to market competitive products to the VELUX skylights; (iv) Respondent's purpose in using the VELUX trademark in the disputed domain name is to attract customers to its website and generate revenue for Respondent via the links to different websites; and (v) Respondent's use of the disputed domain name is commercial.
Finally, Complainant contends that Respondent registered and used the disputed domain name in bad faith because (i) by using the disputed domain name in the manner described, Respondent intentionally intends to attract, for commercial gain, Internet users to his website by effectively diverting part of Complainant's natural traffic in order to generate additional revenue; (ii) Complainant's potential customers may visit the disputed domain name and be led to dealers promoting competitive products by making reference to VELUX trademarks, therefore, causing damage to Complainant and, ultimately, a disruption of Complainant's business; and (iii) the lack of response to Complainant's letters might induce Complainant to make an offer for the disputed domain name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent's default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.6). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Panel finds that there are no exceptional circumstances for the failure of Respondent to submit a Response. As a result, the Panel infers that Respondent does not deny the facts asserted and contentions made by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., supra; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The disputed domain name <velux-usa.com> incorporates the VELUX trademark in its entirety.
Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark that may be sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd, WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282.
The addition of the geographic term "usa" renders the disputed domain name even more confusingly similar to the registered trademark because it causes an immediate association with the sales office of Complainant in the United States of America.
As decided in other UDRP cases, "the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone". LEGO Juris A/S v. Name Administrator, Hong Kong Domains, LLC., supra. See also Wal-Mart Stores, Inc. v. Traffic Yoon, WIPO Case No. D2006-0812. In the instant case, the combination of the word "velux" with the suffix "usa" does not affect the overall impression of the dominant part of the disputed domain name, which is the VELUX trademark.
Also, the addition of the suffix ".com" is non-distinctive because it is required for the registration of the domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540.
Therefore, the Panel finds that the disputed domain name <velux-usa.com> is clearly confusingly similar to the VELUX trademark and, as a result, finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The consensus view in previous URDP panel decisions has been that a complainant is required to make out an initial prima facie case, respondent carrying the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP, WIPO Overview 2.0, paragraph 2.1.
In the instant case, Complainant has established a prima facie case. In fact, the Panel finds as reasonable Complainant's contention that Respondent has never been authorized to use the disputed domain name or any other domain name using Complainant's trademark.
The Panel also agrees that Respondent's use of the disputed domain name does not satisfy the test for bona fide use established in prior UDRP panel decisions as the disputed domain name has been used to redirect to a parking site featuring advertising of Complainant's competitors.
Further, the Panel agrees that the evidence and circumstances of this case indicate that the disputed domain name was registered to attract customers to its website and generate revenue to Respondent via the links to different websites.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
In light of the reputation of the VELUX trademark, the reproduction by Respondent of Complainant's trademark in the disputed domain name shows that Respondent in all likelihood knew of the existence of Complainant's trademark and of its reputation worldwide and intended to benefit from the value of such trademark.
The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435. As decided before, "knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith". Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., supra.
The disputed domain name has been used to redirect to a parking site featuring advertising of products competing with Complainant. This is an attempt to misleadingly divert consumers for Respondent's own commercial gain. Paragraph 4(b)(iv) of the Policy provides that if, by using the domain name 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 his website or location or of a product or service on his website or location, that circumstance shall be evidence of the use of a domain name in bad faith.
In short, the manner in which Respondent has registered and is using the disputed domain name demonstrates that the disputed domain name was registered and used in bad faith.
In light of all the conclusions and findings above, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is 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 name <velux-usa.com> be transferred to Complainant.
Manoel J. Pereira dos Santos
Date: October 28, 2014