WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Roxana Afrooz
Case No. D2016-2384
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
The Respondent is Roxana Afrooz, of North York, Ontario, Canada.
2. The Domain Name and Registrar
The Domain Name <archvelux.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2016. On November 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 24, 2016, 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 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default December 21, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 5, 2017. 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 owner of the worldwide manufacturer of roof windows and accessories, the VELUX Group, as well as the well-known VELUX trademark. The Complainant has since the 1940s carried out its business of being a designer, manufacturer and importer of VELUX roof windows and other products such as sun tunnels, blinds and solar hot water systems. The Complainant’s primary business is in roof windows and blinds. The Complainant is based in Denmark, with presence in 40 countries throughout the world. It sells its products in approximately 90 countries.
The Complainant owns 450 trademarks registrations including or incorporating the word VELUX throughout the world, including in Canada where the Respondent is located, e.g. reg. no. TMA664357, and TMA709901, respectively from 2006 and 2008.
The Complainant’s products have been advertised and sold in Canada since 1976. The Complainant spends over EUR 8 million on its marketing each year. The Complainant operates a national training program known as the VELUX Installer Partnership. The Complainant also promotes its name and reputation through sponsorship of events.
The Domain Name was registered by the Respondent on August 8, 2016. The Domain Name resolves to a website offering architectural services.
5. Parties’ Contentions
The Complainant provides evidence of its trademark registrations, and submits that the VELUX trademark is well-known. The Complainant argues that the Domain Name is confusingly similar to the Complainant’s trademarks. The VELUX trademark is a made up word invented by the Complainant. It is not descriptive. The letters “arch” (abbreviation for architecture) is descriptive of the services being promoted. Used together with the Complainant’s trademark, it creates the impression that the Complainant is offering services and/or a promotion of its products.
The Complainant argues further that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the VELUX mark. The Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Domain Name is being used to commercially advertise and promote the Respondent’s business. The unauthorized use of the Complainant’s registered trademarks in this way to promote the Respondent’s business cannot be considered fair use. The Domain Name is not being used in tribute or criticism of a person or business.
As to bad faith, the Complainant argues that the Respondent was aware of the Complainant’s trademark before the Domain Name was registered. The Respondent intends to use the Domain Name for commercial gain to misleadingly divert consumers. The Respondent is using the Domain Name to redirect Internet users to the website where they promote their architectural services. The Respondent has not responded to the Complainant’s cease-and-desist letters.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark VELUX.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant’s trademark VELUX, with the preffix “arch”. “arch” may be read as an abbreviation for architecture, which seems to be the line of business for both the Complainant and the Respondent. Hence, it serves to support a finding of confusing similarity under this element.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark.
Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way, and the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services. The Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark.
Taking into account that the Respondent makes unauthorized use of the Complainant’s trademark, and the Domain Name resolves to a web page used to advertise and promote the Respondent’s competing business, the Panel considers that the Respondent uses the Domain Name to misrepresent that the Domain Name is connected and/or associated with the Complainant.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its business when the Respondent registered the Domain Name. It is likely that the Respondent’s intention for registering the Domain Name has been to use it for financial gain, evidenced by the fact that the Domain Name resolves to a web page that advertises and promotes the Respondent’s business.
The Panel finds that on the balance of probabilities the Respondent registered and has used the Domain Name for commercial gain to redirect Internet users to the website where the Respondent promotes its architectural services, with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant. This finding is supported by the fact that the Respondent has not responded to the Complainant’s cease-and-desist letters, nor to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name, <archvelux.com> be transferred to the Complainant.
Date: January 11, 2017