WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Kirk Wilson, KAW Trading Ltd
Case No. D2016-2433
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented internally.
The Respondent is Kirk Wilson, KAW Trading Ltd of Cramlington, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <privelux.com> is registered with 123-Reg Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2016. On December 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 2, 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. On December 8, 2016, the Center sent a request for clarification of the Registrant contact information to the Complainant and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on that same day.
The Center verified that the Complaint together with the amended 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 December 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2017. The Respondent sent several emails to the Center, the first one being received on December 1, 2016 and the last one on December 15, 2016. The center notified the Parties of commencement of panel appointment process on January 3, 2017.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 10, 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 VELUX trademark. The Complainant has since the 1940’s 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 UK based company VELUX Company Limited was founded in 1954.
The Complainant owns 450 trademarks registrations including or incorporating the word VELUX throughout the world, including in the UK where the Respondent is located, e.g., UK reg. no. 69115 of July 28, 1950 and UK reg. no. 2431710 of February 23, 2007.
The Complainant’s products have been advertised and sold in the UK since 1954. The Complainant spends over EUR 8 million on its marketing each year.
The Domain Name was registered by the Respondent on December 30, 2011. The Domain Name resolves to a website hosting pay-per-click links.
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 Respondent has added the letters “pri” to the Complainant’s trademark.
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 Respondent’s website at the Domain Name includes links to sites offering competing products. The unauthorized use of the Complainant’s registered trademarks to provide links to sites offering competing products 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 dealers promoting competitive products by making reference to the VELUX trademark. The Respondent has responded to the Complainant’s cease-and-desist letters, but not addressed the Complainant’s assertions.
The Respondent sent several emails to the Center, the first one being received on December 1, 2016 and the last one on December 15, 2016. The emails are not addressing the factual and legal contentions made by the Complainant. The Respondent seems to be under the misunderstanding that he is not the correct domain name holder:
“I don't know what your on about, I haven't got the domain as didn't renew it, I can't afford toilet roll so leave me alone.”
“Why don't you just buy the domain off a domain company instead of harassing me. I have told you I haven't renewed it. Please go away and stop bullying me”
“What does this mean, I dont want you bothering me, how do you go away, I dont own the domain, if I do how do I get rid of it, I cant afford solicitors I am close to bankrupt and you are talking all legal on me an harrassing me.”
“So I don't need to worry about it? You are welcome to it I have never used or intend too. They have been told off me to take me off and also told them to take off that page you are complaining about and they still haven't. I just don't want to have any legal stuff over something I don't even know how I own as my card bounced the last time it came to update”
“I give formal permission to transfer the domains over. I can send a photo of signed copy tomorrow if need be”
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 prefix “pri”. The prefix “pri” may have multiple meanings such as an abbreviation of “primary”, “priority” or “private”. Regardless of the meaning, the overall appearance is that the Domain Name is very close to the Complainant’s trademark.
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 with links to sites offering competing products, 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 with links to sites offering competing products to the Complainant’s products.
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 websites offering competing products to the Complainant’s products, 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 factual and legal contentions, and, based on email correspondence, the Respondent does not seem to object to a transfer of the Domain Name.
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 disputed domain name <privelux.com> be transferred to the Complainant.
Date: January 17, 2017