WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Perfect Privacy, LLC/Milen Radumilo
Case No. D2021-1313
1. The Parties
Complainant is VKR Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Perfect Privacy, LLC, United States of America / Milen Radumilo, Romania.
2. The Domain Name and Registrar
The disputed domain name <uvelux.com> is registered with Namefinger.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2021, 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 entity originally named as Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 5, 2021.
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 Respondent of the Complaint, and the proceedings commenced on May 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 28, 2021.
The Center appointed Michele A.R. Bernasconi as the sole panelist in this matter on June 9, 2021. 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
Complainant, domiciled in Denmark, is the parent company of the VRK Group. The VRK Group consists primarily of the VELUX and the DOVISTA Groups. The VELUX Group runs business in the field of roof windows, skylights, vertical windows, thermal solar energy systems, decoration and sun screening products, ventilation, and indoor climate products. With its presence in 40 countries, the VELUX Group is the largest and best-known company within the VRK Group.
Complainant is the registered owner of the trademark VELUX for various classes across numerous jurisdictions all over the world, including the following:
- VELUX (registration No. 017181), registered in Romania, the domicile country of Respondent, since May 5, 1991, for the classes 11, 19, 20;
- VELUX (registration No. VR 1942 00950) registered in Denmark since October 3, 1942, for the classes 6, 19;
- VELUX (registration No. 1091446) registered in United States of America, the domicile country of the Registrar, since May 16, 1978, for the class 19;
- VELUX (registration No. TMA173331) registered in Canada since December 18, 1970, for the classes 1, 6, 7, 9, 17, 19, 20, 22, 24;
- VELUX (registration No. 000651869) registered in the European Union since July 16, 2004, for the classes 6, 9, 16, 19, 20, 22, 24, 37, 41, 42. (together, the “VELUX trademark”)
Furthermore, Complainant is running a portal in the Internet under the domain name <velux.com>.
Respondent is the owner of the disputed domain name <uvelux.com>. Respondent registered the disputed domain name on October 25, 2020.
A check of the website under the disputed domain name by the Panel on June 28, 2021, showed that it contains links to a range of third-party websites, some of which offer similar products or services to Complainant’s field of business.
5. Parties’ Contentions
Complainant states that it is the owner of the VELUX trademark and that together with its subsidiaries, it has spent substantial time, efforts and money in advertising and promoting VELUX, resulting in a development of substantial goodwill in the VELUX brand. Complainant submits that VELUX has become distinctively and uniquely associated with Complainant’s products and services.
The disputed domain name is identical and/or confusingly similar to the trademark of Complainant
Complainant submits that by holding the national and regional trademarks, it has prima facie standing to file a UDRP case.
Complainant contends that the disputed domain name is confusingly similar with its trademark VELUX and that such confusing similarity cannot be avoided by the mere addition of the letter “u” to the beginning of the trademark. In this respect, Complainant further states that the applicable generic Top-Level Domain (“gTLD”) in a domain name, i.e. here “.com”, is a standard registration requirement and has no legal significance in the assessment.
Respondent has no rights or legitimate interests in respect of the disputed domain name
Complainant contends that Respondent has no rights or legitimate interest in relation with the disputed domain name. In this respect, Complainant argues that its ownership of the VELUX trademark provides it with the exclusive right to use such trademark in commerce.
Complainant argues that it did not license, authorize or permit Respondent to use the disputed domain name and that no actual bona fide or legitimate use can be reasonably claimed.
Complainant further claims that Respondent could have neither acquired rights to nor legitimate interests, as his or its name does not resemble the disputed domain name in any manner. Further, any legitimate interest must be also rejected.
Complainant further describes that the disputed domain name redirects Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Complainant considers this to prove that Respondent wants to monetize the disputed domain name by receiving “pay-per-click fees” from these third-party websites. Complainant concludes that such use of the disputed domain name, merely aiming at monetization, is contrary to the bona fide use.
Finally, Complainant states that the disputed domain name is currently being offered for sale for an amount which appears to be in excess of Respondent’s costs related to the registration of the disputed domain name and that such monetization serves as further evidence of Respondent’s lack of rights and legitimate interests.
The disputed domain name was registered and is being used in bad faith
Complainant contends that the disputed domain name has been registered and is being used in bad faith given the widespread use and famous nature of the Complainant’s trademark VELUX.
By using the disputed domain name Respondent intentionally attempts to attract Internet users by creating a likelihood of confusion with the VELUX trademark, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website of the Respondent.
Complainant further argues that Respondent has previously been involved in over 100 prior UDRP proceedings, as well as that he currently holds registrations for several other domain names that allegedly misappropriate further trademarks of known brands and businesses. In this respect, Complainant concludes that Respondent engages in the pattern of “cybersquatting”, which further proves Respondent’s bad faith.
According to Complainant, Respondent’s bad faith is also demonstrated by the fact that the disputed domain name is currently being offered for sale for an amount in excess Respondent’s out-of-pocket expenses.
At last, Complainant states that further evidence of bad faith is the fact that at the time of initial filing of the Complaint, Respondent used to hide his identity.
Complainants requests that the disputed domain name be transferred to the lead Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel has thoroughly considered in its deliberations all of the evidence and arguments submitted by the parties, even if no specific or detailed reference has been made to those arguments in the following discussion on the merits.
In order to succeed, a complainant must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The domain name is identical or confusingly similar to a trademark 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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is undisputed that Complainant is the owner of the trademark VELUX.
The disputed domain name is identical to Complainant’s trademark VELUX, except for: (1) the gTLD suffix “.com” and (2) the addition of the letter “u” to the beginning of the trademark.
The suffix “.com” is a gTLD, which of course is without legal significance, and does not prevent a finding of confusing similarity.
The addition of the letter “u” does neither affect the visual impression, nor the pronunciation of the disputed domain name compared with the trademark VELUX. The close misspelling at issue is confusingly similar to Complaint’s trademark.
In view of the Panel, the disputed domain name is almost identical and confusingly similar to the trademark VELUX. The first criterion, as per paragraph 4(a)(i) of the Policy, is established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy defines the circumstances that, if proved, establish a respondent’s rights or legitimate interest to a disputed domain name.
First of all, Complainant has provided a prima facie case under this element of the Policy showing that it had no relationship with Respondent and have not granted Respondent any right to register and use its VELUX trademark. Furthermore, there is no evidence that Respondent is commonly known by the disputed domain name.
It also remains undisputed that Respondent does not use, nor has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with bona fide offering of goods and services. A check of the website under the disputed domain name by the Panel on June 28, 2021, showed that it contains links to a range of third-party websites, some of which offer similar services to Complainant’s field of business. The Panel is of the view that such use of the website does not represent a bona fide offering of goods and services. See Nike, Inc. v. Circle Group Internet, Inc., WIPO Case No. D2002-0544.
The above-described conduct serves the purpose of generating revenues by, e.g. any potential “pay-per-click fees” from the third-party websites. Further, it misleads the Internet users by diverting the traffic intended for Complainant to websites of its potential competitors, by creating the impression of association with Complainant’s group.
In consideration of the above, the Panel concludes that Complainant has established that Respondent has no rights or legitimate interest in respect of the disputed domain name. The second criterion, as per paragraph 4(a)(ii) of the Policy, is established.
C. Registered and Used in Bad Faith
The Panel notes that given Complainants’ worldwide recognition, Respondent was or should have been aware of the trademarks prior to registering the domain name. See ALDI GmbH & Co. KG v. Sadettin Kucuk, WIPO Case No. D2014-0953; and Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517.
Furthermore, since the disputed domain name is so obviously connected with the name trademark of Complainant’s group, its very use by someone with no connection with Complainant suggests opportunistic bad faith, i.e. bad faith registration. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Internet users finding <uvelux.com>, in particular in consideration of the brand awareness of Complainant’s trademark, are likely to be misled into thinking Complainant is the registrant, or Complainant is associated with the disputed domain name, and/or will be confused.
Considering the overall circumstances, and in lack of any other argument on the side of Respondent, it is not possible for the Panel to conceive of a plausible situation in which Respondent could legitimately use the disputed domain name. In consequence, the Panel concludes that the disputed domain name has been registered by Respondent in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
What is more, Respondent intentionally attempts to attract Internet users intending to find websites legitimately associated with Complainant, by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship or affiliation, in order to profit from sale of the “pay-per-click fees” from third-party websites. As a matter of fact, the misspelling is compelling evidence of Respondent’s use in bad faith under paragraph 4(b)(iv) of the Policy.
Equally, the fact that Respondent is currently offering to sell the disputed domain name indicates, in the circumstances of this case, bad faith under paragraph 4(b)(i) of the Policy.
The bad faith behavior is sustained based on the numerous UDRP decisions against Respondent. The sheer number of specific findings that Respondent previously engaged in a pattern of bad faith conduct leads to no other conclusion, but that Respondent is a serial “cybersquatter” who acts in bad faith. See Carrefour SA v. Milen Radumilo, WIPO Case No. D2020-1107, and Accenture Global Services Limited v. Contact Privacy Inc. Customer 0157756560, Contact Privacy Inc., Customer 0157756560 / Milen Radumilo, WIPO Case No. D2020-1507.
Finally, there are also strong indications that Respondent conceals its identity, which supports a finding of bad faith. See Dr. Ing. H.C.F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni, WIPO Case No. D2003-0230.
Under these circumstances and taking into consideration the fact that Respondent has not provided any evidence whatsoever of any actual or contemplated legitimate, good faith use by himself of the disputed domain name, the Panel considers that Respondent has registered and used the disputed domain name in bad faith.
The third criterion, as per paragraph 4(a)(iii) of the Policy, is established.
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, <uvelux.com> be transferred to the Complainant.
Michele A.R. Bernasconi
Date: July 1, 2021