WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Nestor Potts
Case No. D2017-1277
1. The Parties
1.1 The Complainant is VKR Holding A/S of Hørsholm, Denmark, internally represented.
1.2 The Respondent is Nestor Potts of Clemmons, North Carolina, United States of America (“United States”).
2. The Domain Name and Registrar
2.1 The disputed domain name <silvelux.net> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2017. On July 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 3, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on August 4, 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
4.1 The Complainant is a company incorporated under the laws of Denmark, and is the holding company of the Velux group of companies, which manufacture and deal in roof windows and accessories under the “Velux” name. The “Velux” business began in the 1940s, with a United States subsidiary being formed in 1976. It currently has a presence in 40 countries and sells its products in approximately 90 countries.
4.2 The Complainant advertises in the United States and elsewhere with a marketing budget of over EUR 10 million. In 2016 the Velux Group spent over EUR 5.7 million on the purchase of AdWords on the Google search engine.
4.3 The Complainant is the owner of many hundreds of trade mark registrations around the world that either comprise or incorporate the term “Velux”. These include United States registered trade mark no. 1492904 for the word mark VELUX in classes 6, 19 and 20 registered on June 21, 1988.
4.4 The Domain Name was registered on May 4, 2017. It would appear from the publically available WhoIs details for the Domain Name that it is registered in the name of an individual in the United States. It has since the date of registration been used to display a pay-per-click (“PPC”) webpage with links that either expressly mention “Velux” and/or refer to products that are sold under that name. That webpage continues to operate at the date of this decision.
5. Parties’ Contentions
5.1 The Complainant refers to its business and registered trade marks and the use made of the Domain Name since registration. It appears also to contend (although does not quite expressly assert) that the extent of the reputation of its VELUX mark in the United States is such that it also possesses unregistered trade mark rights in that term in that territory.
5.2 The Complainant contends that the Domain Name comprises its VELUX trade mark together with the additional letters “sil” and that the term “silvelux” is not a word (generic or otherwise) in its own right. In the circumstances, it contends that the Domain Name is confusingly similar to its registered trade marks.
5.3 The Complainant further contends that the Respondent has no rights or legitimate interest in the trade mark. In this respect it claims that the Domain Name has been used to promote links to sites offering competing products to the Complainant’s products and that such activity does not involve a fair use of the Complainant’s marks.
5.4 Further, the Complainant maintains that from the use made of the Domain Name it can be inferred that the Domain Name was registered and has been used “to attract potential customers for commercial gain to [the Respondent’s] website by means of initial confusion”. The Complainant also contends that the Respondent has failed to respond to a letter sent to the Respondent in which the Complainant complained about the Respondent’s registration and use of the Domain Name. This is said to demonstrate that the Domain Name was registered and has been used in bad faith.
5.5 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.3 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”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Domain Name is confusingly similar to the Complainant’s United States registered trade mark no. 1492904 for the word mark VELUX. The Domain Name incorporates the Complainant’s mark VELUX in its entirety. The Domain Name also comprises the letters “sil” and the generic Top-Level Domain (“gTLD”) “.net”, but these additions do not prevent a finding of confusing similarity for the purposes of the Policy. This is particularly so given that, as far as the Panel is aware, the term “silvelux” has no independent meaning or association.
6.5 The reasons why a domain name incorporating the entirety of another’s mark will usually be considered to confusingly similar to that mark for the purposes of the Policy, were set out in detail in Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-022. Further, section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states as follows:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
6.6 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.7 The Panel accepts the Complainant’s contention that the Domain Name is being used to display PPC links, that these links in some cases refer to the Complainant’s products and that at least some of these links when clicked upon take the Internet user to a page that promotes the products of the Complainant’s competitors. The Complainant has provided evidence in the form of screenshots that shows the nature of the web page displayed from the Domain Name and the Complainant’s contentions as to what is displayed when those links are clicked upon, are both credible and undisputed.
6.8 As is recorded in section 2.9 of WIPO Overview 3.0, the use of a domain name to host a parked page comprising PPC links that either “compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users” does not provide a right or legitimate interest for the purposes of the policy. Indeed, in the opinion of the Panel, such use is usually positive evidence that the Respondent posseses no such rights or legitimate interests.
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 As has already been described, the Panel accepts that the Domain Name is being unfairly used to compete with or capitalise on the reputation and goodwill of the Complainant’s mark or to otherwise mislead Internet users. The Panel also accepts that this is being done with a view to the Respondent’s or some other entity’s or entities’ commercial advantage. Not only does this suggest a lack of rights or legitimate interests, but it is activity that falls within the example of circumstances indicating bad faith use that is to be found at paragraph 4(b)(iv) of the Policy.
6.11 The Complainant in addition to demonstrating bad faith use, must also demonstrate bad faith registration. In this respect, it is perhaps not immediate obvious that the text “silvelux” in the Domain Name was chosen because of any association with, or with the intent to take advantage of, the Complainant’s VELUX mark. Nevertheless, the Panel concludes that this was indeed the intent of the Respondent in this case.
6.12 First, the Panel is prepared to accept, in the absence of any argument or evidence to the contrary, that the Complainant is correct when it asserts that the term “silvelux” has no obvious independent meaning.
6.13 Second, the Panel accepts that the use actually made of the Domain Name since registration provides in this case the best evidence of the Respondent’s intentions when registering the Domain Name. As the Domain Name has been used solely in the short period since its initial registration to take unfair advantage of the Complainant’s trade mark rights, it is reasonable to infer in the absence of any argument or evidence to the contrary, that the Domain Name was registered for that very purpose.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <silvelux.net> be transferred to the Complainant.
Matthew S. Harris
Date: August 17, 2017