WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. MURDO MACLEOD
Case No. D2016-2332
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, internally represented.
The Respondent is MURDO MACLEOD of Helensburgh, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK").
2. The Domain Names and Registrar
The disputed domain names <veluxuk.com> and <veluxwindows.com> are registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2016. On November 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 15, 2016.
On December 16, 2016, the Respondent sent an email to the Center asserting "I bought Veluxuk.com and Veluxwindows.com 16 years ago. Since then I have never used any of these Domain names." The Center acknowledged receipt of this email on the same day.
The Center appointed Alexandre Nappey as the sole panelist in this matter on December 21, 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 the Danish Company VKR Holding A/S.
It owns the Velux Group, worldwide manufacturer of roof windows and accessories.
The Complainant has a presence in 40 countries throughout the world, and sells its products in approximately 90 countries.
The Complainant is the owner of 450 trademarks registrations including or incorporating the word VELUX throughout the world.
- United Kingdom national trademark registration no. 691115 VELUX, registered since July 28, 1950 for goods in classes 6 and 19;
- United Kingdom national trademark registration no. 2431710 , registered since September 5, 2006 for goods in class 19.
The Complainant spends over EUR 8 million on its marketing each year.
Due to their extensive international use, the distinctive VELUX trademarks have become internationally well-known.
The disputed domain names <veluxwindows.com> and <veluxuk.com> were registered by the Respondent on September 1, 2000.
Both disputed domain names resolve to qualified parking pages displaying links in connection with the Complainant's business and products.
5. Parties' Contentions
(1) The Complainant first alleges that the disputed domain names <veluxwindows.com> and <veluxuk.com> are similar to its earlier trademark VELUX, to the point of creating confusion.
The disputed domain names incorporate the Complainant's earlier trademark VELUX in its entirety within the disputed domain names themselves.
The addition of the word "windows" in the first disputed domain name and the letters "uk" in the second one does not reduce the confusing similarity between each disputed domain names and the Complainant's earlier trademark VELUX.
(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The disputed domain names were registered without the consent of the Complainant.
The only distinctive element of the disputed domain names is the Complainant's registered trademark VELUX, as the trademark VELUX is a made-up word invented by the Complainant and is not descriptive.
Then, the Respondent must have been well aware of the Complainant and its rights before the disputed domain names were registered.
As the Respondent is using the disputed domain names in a commercial manner, the use of these disputed domain names is not legitimate.
Indeed, the fact that the websites at the disputed domain names include links to sites offering competing products to the Complainant's products creates likelihood of confusion.
Then, the Respondent's purpose of using the word "velux" in the disputed domain names is to attract customers to its websites and generate revenue for the Respondent via the links to different websites.
(3) Finally, the Complainant claims that the disputed domain names were registered and are being used in bad faith.
The Complainant alleges that VELUX is a highly distinctive trademark.
The Complainant submits that, by using the disputed domain names in the manner described above, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the websites which resolve from the disputed domain names.
Additionally, the Complainant alleges that potential customers of the Complainant may visit the disputed domain names and be led (via the links on the portal website) to dealers promoting their own competitive products by making reference to the VELUX trademark.
The Complainant concludes that, as the links accessible on the websites at the disputed domain names refer to competitive skylights, it aggravates the likelihood of confusion.
Except for its email of December 16, 2016, the Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".
Having consideration to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following:
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant owns exclusive trademark rights in VELUX, which predate the registration of the disputed domain names <veluxwindows.com> and <veluxuk.com>.
The Panel finds that the disputed domain names are confusingly similar to the registered VELUX trademark owned by the Complainant.
Indeed, both disputed domain names incorporate the entirety of the Complainant's VELUX trademark with the mere addition of:
- in the first disputed domain name <veluxwindows.com>, the descriptive term "windows" which directly refers to the Complainant's products;
- in the second disputed domain name <veluxuk.com>, the two letters "uk", meaning "United Kingdom", which directly refers to the Respondent's location.
The dominant part of the disputed domain names is the Complainant's trademark VELUX, and the addition of the generic terms "windows" or "uk" does not avoid confusing similarity.
Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the policy and then the burden shifts to the respondent to demonstrate its rights or legitimate interests.
See De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465.
Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its VELUX trademark.
It results from the circumstances that the Respondent does not own any right on the trademark VELUX or is commonly known by the disputed domain names.
In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.
It provides that:
"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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."
Since VELUX is a well-known and distinctive trademark and there is no evidenced relationship between the Parties, it may be assumed that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain names <veluxwindows.com> and <veluxuk.com>.
Moreover, the Complainant submitted printouts showing that the websites operated under the disputed domain names include links to sites offering competing products to the Complainant's products such as skylights windows.
It appears therefore that the Respondent, by making reference to the VELUX trademark, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to websites on which third parties, including the Complainant's competitors are promoting their own competitive products.
The Panel finds that the Respondent's use of the disputed domain names cannot therefore constitute use of the disputed domain names in the bona fide offering of the goods.
Conversely, the Panel finds that the Respondent registered the disputed domain names with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 names <veluxuk.com> and <veluxwindows.com> be transferred to the Complainant.
Date: January 4, 2017