WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Withheld for Privacy Purposes, Privacy Service provided by Withheld for Privacy ehf / JH Kang
Case No. DCO2021-0031
1. The Parties
The Complainant is VKR Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / JH Kang, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <veluxusa.co> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2021 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 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 the Respondent of the Complaint, and the proceedings commenced on May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021.
The Center appointed Ellen B. Shankman as the sole panelist in this matter on June 3, 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
The Complainant is the owner of trademark registrations for the mark VELUX across various jurisdictions and has spent a considerable amount of time and money protecting its intellectual property rights. These registrations are referred to hereafter as the “Complainant’s trademark(s)”. The Complainant owns VELUX trademark registrations, inter alia: Danish trademark Registration No. VR 1942 00950, issued October 3, 1942 and United States of America (“United States”) trademark Registration No.1091446 issued May 16, 1978 in connection with roof windows and modular skylights, as well as blinds, roller shutters, installation solutions and home automation. The VELUX mark has been used in connection with such goods and related services continuously from the time adopted until the present, and predates the date of the Domain Name registration. The Complainant owns <velux.com> (with a creation date in 1999) and <veluxusa.com> (with a creation date in 2002), which resolve to the Complainant’s website.
In accordance with the WhoIs, the date of the Domain Name registration is June 22, 2020. According to the evidence provided by the Complainant the Domain Name has been used to resolve to website with
Pay-Per-Click (“PPC”) links for solar skylights and windows. The Panel also conducted an independent search to determine that the Domain Name currently resolves to website with PPC links for solar skylights and windows.
5. Parties’ Contentions
The Complainant is the parent company of the VKR Group. Through its subsidiaries, the Complainant offers roof windows, skylights, vertical windows and systems, thermal solar energy systems, decoration and sun screening products, ventilation, and indoor climate products. The Complaint contends that, Villum Kann Rasmussen, the Complainant’s founder, was an inventive and resourceful man. He established the VKR Group in 1941, and patented his first roof window in 1942. He called it VELUX – “VE”, from the word “ventilation” and “LUX”, from the Latin word for “light”. For 80 years, the VKR Group has been passionate about bringing daylight, fresh air and better environment into people’s everyday lives.
Today, the VKR Group consists primarily of the VELUX Group and the DOVISTA Group. The group employs a total of 15,400 people in 40 countries. In 2020, the VKR Group reported DKK 22.6 billion in revenue and DKK 3.7 billion in net profit. The increase in net profit is attributed primarily to improved operating profit within the business areas. The VELUX Group, in particular, was a significant contributor. The VELUX Group is the largest and best-known company within the VKR Group. It is based in Denmark and is an international company with presence in 40 countries. The VELUX product range includes roof windows and modular skylights, as well as decorative elements, blinds, roller shutters, installation solutions and home automation. In 2020, VELUX was considered as one of the top 40 most inspiring organizations in the Netherlands by Synergie.
Online, the Complainant promotes and provides information about its VELUX brand and products at “www.velux.com”. In summary, the Complainant, along with its subsidiaries, has spent substantial time, effort, and money advertising and promoting VELUX, and has thus developed substantial goodwill in the VELUX brand. Through such widespread and extensive efforts, VELUX has become distinctive and uniquely associated with the Complainant and its products and services. In addition to the numerous trademarks filed in connection with Complainant’s business prior to the Respondent’s registration of the Domain Name, Complainant has over 80 years of history and its VELUX brand continues to be the market leader in the manufacturing of skylights and roof windows, which demonstrates the Complainant’s fame.
The Complainant argues that the Domain Name incorporates Complainant’s VELUX trademark in its entirety while merely adding the geographical term “usa” (abbreviation for the United States) to such trademark, thus rendering the Domain Name confusingly similar to its trademark. Moreover, the Respondent’s use of this particular geographical term in conjunction with Complainant’s trademark only serves to underscore and increase the confusing similarity between the Domain Name and the Complainant’s trademark as this specific term is closely linked and associated with the Complainant. More specifically, the VELUX brand and products are widely available in the United States. The Complainant also maintains the website at “www.veluxusa.com” to provide information on all skylights, roof windows, sun tunnel skylights, and blinds offered by VELUX in the United States. By registering a domain name that incorporates the Complainant’s VELUX trademark with the addition of the geographical term “usa”, the Respondent has created a domain name that is confusingly similar to Complainant’s trademark, as well as its <velux.com> domain name. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Further, the composition of the Domain Name, which is identical to the Complainant’s <veluxusa.com> domain name, makes it illogical to believe that the Respondent registered the Domain Name without specifically targeting the Complainant.
The Respondent is not sponsored by or affiliated with the Complainant in any way. Furthermore, the Complainant has not given the Respondent license, authorization or permission to use the Complainant’s trademark in any manner, including in domain names. Moreover, since the Respondent applied for this Domain Name under a proxy and even when the identity was revealed, the Respondent is not commonly known by the Domain Name, which evinces a lack of rights or legitimate interests.
The Complainant contends that the Respondent is using the Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which relate to the Complainant’s business. For instance, the website at which the Domain Name resolves features multiple third-party links for “Roofing Skylights Residential”, “Skylight Window Replacement”, and “Roof Skylights”. Presumably, the Respondent receives PPC fees from the linked websites that are listed at the Domain Name’s website.
The Respondent is using the Domain Name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the Domain Name and website. By creating this likelihood of confusion between the Complainant’s trademark and the Domain Name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the Domain Name, the Respondent has demonstrated an intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the Domain Name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple PPC links posted to the Respondent’s website.
Furthermore, the Domain Name is being offered for sale at Afternic for USD 199.00, which serves as further evidence of the Respondent’s lack of rights and legitimate interests, and which constitutes bad faith. The Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of his out-of-pocket expenses. The Respondent’s seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith.
The Complainant alleges that the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding. The Complainant sent its notices to both the privacy service listed on the Domain Name’s WhoIs and the relevant Registrar to no avail.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark VELUX, in respect of a wide array of skylights and windows and related services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the geographic term “usa” to the Complainant’s trademarks does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Further, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent 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 Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VELUX.
Further, the Panel finds that the Domain Name integrates the Complainant’s mark in its entirety and that the Domain Name is confusingly similar to the Complainant’s trademark. In addition, the Panel finds that the mere addition of the geographical term “usa” to the Domain Name does not affect the analysis under the first element, being the trademark of the Complainant recognizable. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the VELUX Mark, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to redirect Internet users to various third party websites, including competing websites, almost certainly for the Respondent’s commercial gain, which is not a legitimate noncommercial purpose.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). Moreover, the Panel agrees with the Complainant that the Respondent’s inclusion of the geographical term “usa” in conjunction with the Complainant’s trademark only serves to underscore and increase the similarity between the Domain Name and the Complainant’s trademark as indicating an association with the Complainant’s products in the USA, which thereby enhances the association with Complainant’s trademark. See Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org, WIPO Case No. D2013-1323 (finding that “the addition of the word ‘London’ to the trademarks [SANDERSON and SANDERSON HOTEL] as part of the Domain Name <sandersonlondonhotel.org> does not negate confusing similarity but rather enhances it in that London is a geographic term that identifies the place where Complainant’s Sanderson Hotel is located). Particularly noting the similarities between the Domain Name and the Complainant’s domain name <veluxusa.com> as well. Such unauthorized registration, with prior knowledge, and noting the composition of the Domain Name, is not legitimate as it creates a risk of implied affiliation.
The Panel agrees with prior UDRP decisions that have consistently held that respondents that monetize domain names using PPC links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name. As such, the Respondent is not using the Domain Name to provide a bona fide offering of goods or services as allowed under Policy 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy 4(c)(iii). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9(“Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”).
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
By registering the Domain Name that comprises the Complainant’s trademarks in their entirety, together with the PPC links for goods related to those of the Complainant’s on the website, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, where the Domain Name consists of the Complainant’s VELUX trademark and the geographical term “usa”, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of Complainant’s trademark by diverting Internet users seeking information about this distinctive sign to its own website, where sponsored/competitive links had been published, and that the Respondent’s purpose in registering the Domain Name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about the Complainant. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.
A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy ¶ 4(b)(iv). See WIPO Overview 3.0, section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.
The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual or constructive knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant.
In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5(“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
Additionally, the offer to sell the Domain Name in what apparently would be an excess of out-of-pocket costs further supports the Panel’s finding of bad faith. See Groupe Auchan v. Bui Tan Dat / Domain ID Shield Service Co., Limited, WIPO Case No. D2014-1935 (“The Panel cannot find any justification for the registration and use of the disputed domain name in such circumstances except to find that the Respondent registered and is using the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent's documented out-of- pocket costs and/or to disrupt the Complainant’s business.”). See also Caldsoft Way3D Sistemas Eireli EPP v. JInsoo Yoon, WIPO Case No. D2016-2514 (finding bad faith where the registrant is “simply offers the disputed domain name for sale”).
The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past Panels have held serves as further evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., WIPO Case No. D2003-0230. See also WIPO Overview 3.0, section 3.6(“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith.”).
The Panel finds that this is a classic example of the unfortunate abusive and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit financially from the Complainant’s trademark, in bad faith use and registration.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant by evidence of use of the related targeted PPC links, and the use of the Domain Name, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under 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 Domain Name <veluxusa.co> be transferred to the Complainant.
Ellen B Shankman
Date: June 11, 2021