WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. John Vogel
Case No. D2014-0155
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Lisbeth Ferdinand Petersen, Denmark.
The Respondent is John Vogel of Tucson, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <veluxarizona.com> 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 January 31, 2014. On January 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on March 4, 2014.
On March 4, 2014, the Center received an email communication from the Respondent. On March 14, 2014 the Center received another email communication from the Respondent which was replied to by the Complainant on the same date. Both email communications are discussed below and will be regarded as Supplemental Filings by the Panel.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 13, 2014. 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 VELUX trademark registered in the United States of America under number 76406627 on August 2, 2005 (Annex E to the Complaint).
The disputed domain name, registered on February 6, 2011, currently redirects Internet users to the Respondent’s website available at “www.sunshineexperts.com”.
5. Parties’ Contentions
The Complainant asserts that since 1941, it has been manufacturing and designing roof windows, blinds and other products marked with its VELUX trademark, currently having a presence in around 40 countries and selling its products in approximately 90 countries throughout the world.
According to the Complainant, the distinctive element of the disputed domain name is its first part “velux” which is identical to the Complainant’s well-known VELUX trade name and mark, registered in numerous countries (Annexes D and E to the Complaint). The disputed domain name is confusingly similar to the VELUX trademark given that the addition of the suffix “Arizona“ merely relates to the Respondent’s place of business but creates a potential impression in Internet users that the Respondent is one of VELUX group’s sales offices located in Arizona, or is affiliated with the Complainant.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Respondent is not part of the Complainant’s dealers network nor is it an authorized installer;
ii. the Respondent registered the disputed domain name without the Complainant’s authorization;
iii. it has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name;
iv. the disputed domain name was used in connection with a website offering the Complainant’s products seeking to create an impression of association with the Complainant;
v. the Respondent did not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus conveying the false impression that the Respondent is an authorized reseller/service center for the Complainant’s products, and
vi. the Complainant tried to contact the Respondent on September 19 and 26, 2013 (Annex G to the Complaint) through e-mails, the first of which was replied by the Respondent stating that the website would be removed shortly, what was not done in spite of other e-mails sent by the Complainant requesting proof of the cancellation of the disputed domain name (Annexes H and I to the Complaint).
In what it relates to the bad faith in the registration and use of the disputed domain name, the Complainant asserts that the Respondent’s knowledge of the Complainant’s trademark is evident given the reproduction of its logotype in connection with the products typically manufactured by the Complainant on the website that resolved to the disputed domain name, being it only possible to conclude that the Respondent knew about the Complainant’s trademark and reputation, and used them to its advantage in bad faith.
Lastly, the Respondent, by using the disputed domain name, is not making a legitimate non-commercial or fair use without intent for commercial gain, but is misleadingly diverting consumers for its own commercial gain.
The Respondent did not submit a formal Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the VELUX trademark.
In this Panel’s view, the inclusion of the Complainant’s trademark entirely in the disputed domain name together with the suffix “arizona”, which relates to a United States state, can be easily associated by Internet users as a possible reference to a local presence of the Complainant in that state and is thus not sufficient to avoid a risk of undue association by the Complainant’s customers or Internet users in general.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Respondent has been redirecting Internet users to its website in which it is stated that:
“Welcome to Sunshine Experts, a company dedicated to installing the best in daylighting systems in Southern AZ, Tucson and the WORLD. From Solatube tubular skylights to Velux traditional skylights to retractable door screens, awnings and retractable patio shades, we’ve made it our mission to bring a little more light into your life. We are the premier Solatube Dealers in Tucson Arizona.”
The logos of the Complainant’s VELUX trademark and other trademarks of that field are depicted in the bottom of the page.
Further to that, the Respondent sent an e-mail to the Center on March 4, 2014 stating that “the site was turned over to velux long time ago. Stop harassing us” (sic) and another e-mail dated March 14, 2014 reiterating that “this site was dead and turned over to Velux”, further claiming to be a dealer for the Complainant and that the site aimed at promoting the Complainant’s product line. Lastly, the Respondent further asserted that the Complainant never compensated him for the registration of the disputed domain name and promotion made.
In a reply to the Respondent’s e-mail message, the Complainant, on the same date, asserted that the disputed domain name is still actively being redirected to the Respondent’s website and that its “Dealer Guidelines” expressly forbids the registration of the VELUX trademark in domain names.
In view of the aforementioned description of the facts, this Panel concludes that, in spite of the Respondent’s allegations, it is clear that the Respondent has not turned over the disputed domain name to the Complainant. Quite the contrary, the Respondent has kept the redirection of the disputed domain name to its website in which clear knowledge of the Complainant’s trademark is made.
More than that, the Respondent states in its e-mail of March 14, 2014 that it is a dealer of the Complainant’s products. If that is indeed true then it is not complying with the Complainant’s Dealer Guidelines which states that:
“11. For the sake of clarity, it is expressly stated that the Dealer is not allowed to establish registered rights to the VELUX trademark or any other trademark of the VELUX Group in any form; this prohibition includes but is not limited to: [….] c. registration of domain names incorporating the trademarks.”
Therefore, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name as well as the Complainant’s statement that no authorization or license was granted for the use of the VELUX trademark in the disputed domain name corroborate with the indication of a lack of right or legitimate interests in the disputed domain name.
Furthermore, according to the evidence submitted by the Complainant (print-outs of the Respondent’s website to which the disputed domain name resolves) indeed no express disclaimer is made as to a lack of relationship between the parties – quite the contrary given the reproduction of the Complainant’s logo, what leads this Panel to the conclusion that the Respondent was seeking to create an impression of association with the Complainant, what does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the reproduction of the Complainant’s trademark logotype in connection with the products commonly manufactured by the Complainant in the website that resolved to the disputed domain name.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt of misleadingly diverting consumers for his own commercial gain.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <veluxarizona.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: March 24, 2014