WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Domains by Proxy, LLC / Gilad Maor
Case No. D2018-1139
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, internally-represented.
The Respondent is Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Gilad Maor of Rishon Lezion, Israel.
2. The Domain Name and Registrar
The disputed domain name <veluxio.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 4, 2018.
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 June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2018.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on July 9, 2018. 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 Danish company active within the field of, inter alia, roof windows and blinds. Furthermore, the Complainant is the holder of several trademark registrations for VELUX, including the United States trademark Reg. No. 1492904 (VELUX as a word mark), registered on June 21, 1988.
The disputed domain name was registered on April 10, 2015 and resolves to a Pay-Per-Click (“PPC”) website.
5. Parties’ Contentions
The Complainant is the owner of the Velux Group, a worldwide manufacturer of roof windows and accessories. The Complainant has since the 1940’s continuously carried out its business of being a designer and manufacturer of roof windows and other products, such as sun tunnels, blinds, and solar hot water systems. The Complainant sells its products in approximately 90 countries, and spends more than EUR 10 million on marketing each year.
Moreover, the Complainant is the holder of 450 trademark registrations including or incorporating the word “velux”. As a result of the scale and extent of advertising, the Complainant’s trademarks have become household names and are recognized by, among others, contractors in the United States as indicating the Complainant’s companies or goods and services.
The Complainant has established an extensive and valuable public reputation and goodwill in the Complainant’s trademarks. The reputation and goodwill extends beyond the range of goods and services for which the Complainant has used or permitted the use of its trademarks, and encompasses any goods and/or services which might reasonably be expected to be produced or supplied by the Complainant or its authorized users.
The disputed domain name incorporates the Complainant’s VELUX trademark, with the addition of the letters “io”. “Veluxio” is not a generic or descriptive word.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered without the knowledge or consent of the Complainant, and it resolves to a portal website, with links to miscellaneous products including skylights, roof windows, and blinds.
The Respondent is not commonly known by the disputed domain name. The fact that the Respondent’s website includes links to sites offering products competitive with the Complainant’s products creates a likelihood of confusion. Thus, the Respondent has used the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location. No other basis for the Respondent’s decision to use the highly distinctive VELUX trademark in the disputed domain name can be inferred under the circumstances.
It is foreseeable that potential customers of the Complainant may visit the subject website and be led, via the links on the website, to dealers promoting their competitive products. This is likely to cause damage to the Complainant because of reduced traffic to the Complainant’s own websites and, ultimately, lost sales.
The Respondent was notified of the Complainant’s objections to the subject website by letter dated October 26, 2017, but the Respondent never reverted. It could be inferred from this lack of response that the Respondent disrupts the Complainant’s business with the purpose to induce the Complainant to offer a ransom for the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the holder of trademark registrations for VELUX. The disputed domain name incorporates the Complainant’s trademarks in their entirety, with the addition of the letters “io” and the generic Top-Level Domain (“gTLD”) “.net”. As noted by previous UDRP panels, the gTLD is typically not distinguishing for the purposes of establishing identity or confusing similarity.
The Panel finds that the differences between the disputed domain name and the Complainant’s trademarks do not avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks within the meaning of the Policy, paragraph 4(a)(i), and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates – with the above-mentioned minor difference – the Complainant’s trademark.
Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant nor authorized to use the Complainant’s trademarks in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name was registered on April 10, 2015. This is, for example, more than 26 years after the Complainant’s United States trademark registration for VELUX. Furthermore, the Complainant has submitted evidence showing that the disputed domain name resolves to a site presenting advertising links for goods identical or similar to the goods marketed by the Complainant under the Complainant’s trademarks. In the light thereof, and considering the high degree of similarity between the disputed domain name and the Complainant’s trademarks, it is in the Panel’s view apparent that the disputed domain name was registered and is being used with knowledge of the Complainant’s trademark rights and business.
All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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 <veluxio.net> be transferred to the Complainant.
Date: July 20, 2018