WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Eric Schoell, Window Medics Plus
Case No. D2015-0359
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Lisbeth Ferdinand Petersen, Denmark.
The Respondent is Eric Schoell, Window Medics Plus of Massachusetts, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <veluxrepair.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 March 3, 2015. On March 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 3, 2015, 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.
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, and the proceedings commenced on March 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. The Response was filed with the Center on April 7, 2015.
The Center appointed Nick Gardner as the sole panelist in this matter on April 24, 2015. 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
There is little, if any, dispute about the key facts which can be summarized as follows.
The Complainant is a company incorporated under the laws of Denmark. It has since 1941 carried on business as a designer and manufacturer of its Velux roof windows and other products and today is the owner of a group of companies which carry out on a worldwide basis the business of manufacturing and sale of roof windows and accessories, that group being known as the Velux Group. The Complainant through the Velux Group has a presence in some 40 countries throughout the world, and sells in approximately 90 countries. The Complainant's windows are predominately of the skylight type, designed to be installed in a pitched or sloping roof.
The Complainant owns a large number of trade marks in respect of the word "velux" including for example United States registered trade mark 76406627 registered on August 2, 2005 for amongst other things the installation and repair of windows.
The Respondent is based in Massachusetts in the United Sates and operates a business repairing windows, particularly in relation to the replacement of double glazed window panels which have, through age, failed and suffer from water ingress and condensation. The Respondent registered the Disputed Domain Name on August 15, 2012. The Respondent operates a website at "www.windowmedicsplus.com" (the "Respondent's Website"), to which any attempt to access a website at the Disputed Domain Name redirects. The Respondent's Website contains material explaining and promoting its business of window repair and invites potential customers to contact the Respondent. The Respondent's Website carries a logo with the words "Velux ® Certified Repair" but promotes the Respondent's business generally which relates to repair of all types of double glazed windows and doors, and not just those manufactured by the Complainant, nor just skylight type windows.
The Complainant has in correspondence requested the Respondent to cease its use of the Disputed Domain Name. The Respondent has not replied to that correspondence.
5. Parties' Contentions
The Complainant's case can be summarized as follows.
The Disputed Domain Name is similar to its trade mark VELUX. The only difference is the addition of the generic term "repair". This addition does not distinguish the Disputed Domain Name from the Complainant's trade mark.
The Respondent has no rights or legitimate interests in the term "velux". There is no other meaning commonly associated with these terms other than in relation to the Complainant and its products. The Complainant has not authorized the Respondent to use the term "velux".
The Disputed Domain Name was registered and is being used in bad faith. Consumers are likely to be deceived and/or confused by the Respondent's use of the Disputed Domain Name, and the Respondent's registration and use of the Disputed Domain Name take unfair advantage of the Complainant's trade mark and the Complainant's significant and longstanding reputation. The Respondent has used the Disputed Domain Name to intentionally attempt to attract for commercial gain, Internet users to its website.
It is convenient to set out the Respondent's Response (which was in the form of an email) verbatim. It reads as follows:
"This email is in response to dispute case number D2015-0359. I have no desire to release my domain name "veluxrepair.com". I own a skylight repair company and was originally certified as a Velux dealer by area manager for Velux Dave Poikonen. I am assured by my attorney that owning "veluxrepair.com" is not an infringement on trademark laws. Here is a portion from the USPTO website concerning this...
"A domain name and a trademark differ. A trademark identifies goods or services as being from a particular source. Use of a domain name only as part of a web address does not qualify as source-indicating trademark use, though other prominent use apart from the web address may qualify as trademark use".
I do not advertise or use "veluxrepair.com" in any marketing we do. It does nothing more than link anyone who searches for a company that does Velux repair work to my website. In no way is this trademark infringement. If Velux is interested in purchasing "veluxrepair.com" from me I am willing to listen to a reasonable offer.
6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark VELUX. The filed evidence establishes the Complainant has carried on business internationally under the name Velux for many years and its products have clearly been marketed under that name on an international basis on a very substantial scale. Further, the Complainant has a wide range of registered trade mark rights in the word "velux".
The Disputed Domain Name is confusingly similar to the VELUX trade mark. Previous 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" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). The only differences in the present case are the addition of the generic term "repair". This is not sufficient to distinguish the Disputed Domain Name. It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the word "repair") to the disputed domain name has little, if any, effect on a determination of identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark and, therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Rather unhelpfully the Complainant has not anywhere in its Complaint dealt with the fact that the Respondent's Website carries a logo with the words "Velux ® Certified Repair". The Panel does not know from the Complaint whether or not the Complainant accepts that the Respondent has in some way been certified by the Complainant which clearly is of some relevance to the issues before the Panel. The Respondent for its part states somewhat cryptically that it "was originally certified as a Velux dealer by area manager for Velux Dave Poikonen" but provides no further information about this issue. The Panel is left in the dark as to what this certification means, whether it is still in effect and what if any relevance it might have. In these circumstances the Panel will assume in the Respondent's favour that it has been in some way certified by the Complainant to effect repairs on its windows and will consider whether that certification is sufficient to legitimise the Respondent's registration and use of the Disputed Domain Name.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, 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 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.
None of these apply in the present circumstances. The only one of possible relevance is (i). However the Panel does not consider the use the Respondent has made of the Disputed Domain Name is bona fide given that it is being used to redirect to the Respondent's Website which promotes not just repair of the Complainant's products but repair of doors and windows generally and so far as can be determined from the material before the Panel, using components not supplied by the Complainant. The Respondent is no doubt entitled to promote itself as being able to repair the Complainant's windows. What it is not entitled to do is to use for this purpose a domain name which suggests that it is the Complainant, or is authorised by the Complainant if in doing so it is (1) offering a service which extends to windows generally and not just those of the Complainant; and (2) appears to involve the supply of components not manufactured by the Complainant. That use is not a bona fide offering of goods or services.
In reaching this conclusion the Panel has considered carefully the views of previous panels as recorded in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). Specifically under paragraph 2.3 this considers the question "Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?" and states as follows:
"Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>)."
In the present case the Panel is prepared to assume in the Respondent's favour that it is an authorised repairer of the Complainant's products and believes that the so called "Oki Data" principles (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903) can by analogy also be applied to authorised repairers of a complainant's products and should be considered carefully. It seems to the Panel that to fall within these principles an authorised repairer would need to be using the domain name in question only in relation to the repair of the complainant's products, and only using materials supplied by the complainant, assuming that was what a complainant required its authorised repairers to do. In the present case the Respondent is certainly not using the Disputed Domain Name to promote just the repair of the Complainant's products. The record before the Panel is not clear on what materials the Respondent uses when effecting repairs, nor is there any information before the Panel as to what the Complainant requires authorised repairers to use in terms of spare parts and materials, although the Panel assumes that for significant repairs it would require the relevant parts to be sourced from the Complainant. However the Panel does not need to rely on this latter element as the fact that the Respondent's Website is not restricted to repairs of the Complainant's products is sufficient for the Panel to determine this issue. Accordingly the Panel does not consider the Respondent satisfies the "Oki Data" principles in a way which would establish a legitimate interest in the Disputed Domain Name.
Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the Panel concludes that the Disputed Domain Name has been registered and used in bad faith. The Disputed Domain Name is of a form which the Panel considers would be likely to be taken as a name associated with the Complainant's own business. The word "velux" has no other meaning save in relation to the Complainant and its products, and that word is being combined with the entirely descriptive and generic word "repair". It is being used to attract customers. The Panel does not agree with the Respondent that it is not being used in any marketing – its very existence and the way it is used to redirect traffic to the Respondent's Website is itself clearly a form of marketing. As such it falls within paragraph 4(b)(iv) of the Policy which reads as follows: as "(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location".
The Panel also notes that the Response contains an invitation to the Complainant to make an offer to purchase the Disputed Domain Name. The Panel infers that this is seeking an offer for an amount of valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name, and as such is further evidence of bad faith (see paragraph 4(b)(i) of the Policy).
The Panel notes that the Respondent says he has been advised by his attorney that owning the Disputed Domain Name is "not an infringement of trademark laws" and quotes material from the United States Patent and Trademark Office (USPTO) website in support of this argument. That is however irrelevant to this proceeding. The question the Panel has to determine is not whether or not the Respondent's actions infringe US trade mark law, but whether the registration and use of the Disputed Domain Name is in bad faith within the terms of the Policy. This is a different question and not one the Respondent has addressed.
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and hence that 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 <veluxrepair.com> be transferred to the Complainant.
Nick J. Gardner
Dated: May 5, 2015