WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Graham Abbott
Case No. D2017-0059
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, internally represented.
The Respondent is Graham Abbott of South Hampton, United Kingdom of Great Britain and the Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <veluxblindrepair.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 January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, 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 January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017.
On February 3, 2017, the Respondent sent an email to the Center, referring to the Complaint received from the Center. The Respondent stated in this email that he was not aware that the “address still existed” and that he was “fairly certain that it is not linked to any URL”. The Respondent declared himself “happy to sign over the domain name”. The Center acknowledged receipt of this communication on February 6, 2017 and informed the Parties of the possibility of suspending the UDRP proceeding to explore settlement options. On February 8, 2017, the Complainant requested the Center to appoint a panel in this administrative proceeding.
The Respondent did not submit a formal response to the Complaint, but submitted a similar proposal to hand over the disputed domain name on February 13, 2017.
The Center appointed Anne-Virginie La Spada-Gaide as the sole panelist in this matter on February 22, 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 a company incorporated under the laws of Denmark, and is the owner of the worldwide manufacturer of roof windows and accessories, the VELUX Group, as well as of the well-known VELUX trademark.
The VELUX Company Limited was founded in 1954. The Complainant’s primary business is in roof windows and blinds, and the VELUX roof window was pioneered by the Complainant.
The Complainant has a presence in 40 countries throughout the world, and sells its products in approximately 90 countries. The business has grown consistently and substantially to become a well-known brand worldwide.
The Complainant is the owner of numerous trademark registrations including or incorporating the word “Velux” throughout the world. The Complainant owns in particular the following trademark registrations in the United Kingdom:
- VELUX, no. 691115 of July 28, 1950, in classes 06 and 19;
- VELUX & design, no. 2431710 of September 5, 2006, in class 19.
The Respondent registered the disputed domain name on April 22, 2015. The disputed domain name was connected to a parking page with sponsored links promoting blinds as well as related goods or services.
By a letter of November 9, 2016, the Complainant informed the Respondent that it objected to the disputed domain name and asked the Respondent to transfer the disputed domain name. The Respondent did not reply to this letter.
5. Parties’ Contentions
The Complainant’s submissions may be summarized as follows:
The Complainant’s trademark is the first word used in the disputed domain name. The generic expression “blind repair” is purely descriptive of the services being promoted under the links featured on the parking page to which the disputed domain name resolves. Used together with the Complainant’s trademark, this expression creates the impression that the Complainant is offering services and/or a promotion in relation to its products.
The Respondent is not commonly known by the disputed domain name, the dominant component of which is the Complainant’s registered VELUX trademark. The Respondent is using the disputed domain name in a commercial manner and the use of the disputed domain name is not legitimate. The unauthorized use of the Complainant’s registered trademark to provide links to sites offering competing products with the Respondent’s products cannot be considered fair use.
The Respondent must have been well aware of the Complainant and its rights before the disputed domain name was registered. The fact that the Respondent’s website at the disputed domain name includes links to sites offering competing products to the Complainant’s products creates a likelihood of confusion. By creating a likelihood of confusion with the Complainant’s trademark, the Respondent has used the disputed domain name to intentionally attempt to attract for commercial gain, Internet users to its website or other on-line location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent is 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
The Respondent has submitted two communications in this matter which evidence a unilateral and unambiguous consent to transfer the disputed domain name. The Complainant in turn requested that a panel be appointed. Noting that UDRP panels have the discretion to order transfer on the basis of unilateral consent in situations such as these, the Panel in any event finds that the Complainant has not agreed to a consent decision and thus the Panel proceeds to a substantive determination on the merits. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.13).
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark VELUX.
The disputed domain name <veluxblindrepair.com> reproduces the Complainant’s trademark in its entirety, and combines this trademark with the descriptive words “blind” and “repair”, which are easily understood as meaning “repair of blinds”.
The trademark VELUX is the most distinctive element in the disputed domain name. The Panel is of the opinion that the mere addition of descriptive words such as “blind” and “repair” does not change the overall impression produced by the domain name and is insufficient to avoid confusion with the Complainant’s trademark. The disputed domain name is therefore confusingly similar to the Complainant’s trademark according to paragraph 4(a)(i) of the Policy (See Banque Pictet & Cie SA v. Brian Dyson and David Kalan, WIPO Case No. D2016-1114; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.
The Respondent has used the disputed domain name in connection with a website featuring sponsored links promoting goods or services related to blinds. A number of UDRP panels have found that use of a domain name corresponding to the trademark of another for the purpose of offering sponsored links is generally not evidence of any rights or legitimate interests (see Woolworths Limited v. DomainAdminkPrivacyProtect.org / Smvs Consultancy Private Limited, WIPO Case No. D2010-1046, Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695).
Furthermore, on February 3, 2017, upon receipt of the Complaint, the Respondent sent an email to the Center stating that he was not aware that the “address still existed” and that he was “fairly certain that it is not linked to any URL”. The Respondent declared himself “happy to sign over the domain name”. The Respondent did not file a formal Response to the Complaint.
The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel infers from the Respondent’s email of February 3, 2017 expressing his willingness to “sign over the domain name” and from the Respondent’s failure to submit a Response to the Complaint that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the well-known character of the trademark VELUX, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name. The association of the mark VELUX with descriptive words referring directly to the Complainant’s products shows in the Panel’s view that the Respondent was aware of the Complainant’s activities.
Furthermore, the Respondent has used the disputed domain name in connection with a website featuring sponsored links that relate to blinds, whereas the Complainant has been in the business of manufacturing and selling blinds for many years. This shows, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in 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 <veluxblindrepair.com> be transferred to the Complainant.
Anne-Virginie La Spada-Gaide
Date: March 8, 2017