WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Stephen Batchelder

Case No. D2012-1226

1. The Parties

The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Lisbeth Ferdinand Petersen, Denmark.

The Respondent is Stephen Batchelder of Sherman Oaks, California, United States of America (“United States”).

2. The Domain Name and Registrar

The Disputed Domain Name <veluxsuntunnels.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2012. On June 15, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On June 15, 2012, GoDaddy.com, LLC 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 June 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 12, 2012.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on July 18, 2012. 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 the Velux Group, the worldwide manufacturer of roof windows and accessories and has, since 1941, carried on business as a designer and manufacturer of Velux roof windows and other products. The Complainant is also the owner of the VELUX trade mark which was first registered in Denmark in 1942 and is also registered in the European Union, the United States and numerous other countries. The Complainant has a presence in approximately 40 countries and sells its products in approximately 90 countries.

The Complainant is also the owner of the registered trade mark SUN TUNNEL SKYLIGHTS which is registered in more than 30 countries in the world and has United States registration no. 1,936,137. It should be noted that the Complainant only stated the existence of the SUN TUNNEL SKYLIGHT trade mark but provided no claim to or evidence of such trade mark ownership by it. The Panel confirmed that the Complainant owned a Community Trade Mark for SUN TUNNEL SKYLIGHT via an online search.

The Velux Group intensively markets Velux roof windows and incurs substantial marketing costs in numerous countries including the United States. The Velux Group directs its marketing effort towards professional users, including their advisers and dealers in building materials, as well as towards end users, including home owners. The Complainant’s marketing activities include the distribution of product catalogues, advertising, television commercials and sponsorship, such as the Velux 5 Oceans, a single-handled yacht race across the five oceans of the world.

The Disputed Domain Name was registered by the Respondent on April 15, 2011, and renewed on April 16, 2012.

The Panel accessed the website displayed at the Disputed Domain Name on July 25, 2012. The website appears to be a blog with only one post, dated June 15, 2011.

On April 15, 2011, the Respondent in this present proceeding registered the domain name <veluxsuntunnelskylight.com>, which is similar to the Disputed Domain Name. On the website hosted at the domain name <veluxsuntunnelskylight.com> the Respondent offered both the Complainant’s Velux goods and competing products for sale. In a decision dated February 13, 2012, VKR Holding A/S v. Stephen Batchelder, WIPO Case No. D2011-2190, the panel found that the domain name <veluxsuntunnelskylight.com> was confusingly similar to the Complainant’s VELUX trade mark, that the Respondent did not have rights or legitimate interests in the domain name, and, that the domain name was being used in bad faith. As a result, the panel ordered that the domain name <veluxsuntunnelskylight.com> be transferred to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The Complainant is the owner of several trade marks composed of the word VELUX in the European Union, the United States and numerous other countries. The Complainant’s trade marks are used in relation to its primary business, being the manufacture and sale of roof windows and blinds.

The most distinctive element of the Disputed Domain Name is “velux”, which is identical to the Complainant’s well known VELUX trade mark and name. The suffix “sun tunnel” forms part of the Complainant’s registered trade mark SUN TUNNEL SKYLIGHTS. These terms cause a link to the Complainant’s business rather than distinguish the Respondent’s business to a significant extent. In addition, the Complainant operates a website in the United States at “www.suntunnelskylights.veluxusa.com”. As a result the Disputed Domain Name is confusingly similar to the Complainant’s trade marks in which it has established rights.

(ii) The Disputed Domain Name was registered by the Respondent on April 15, 2011 without the knowledge or consent of the Complainant. The Respondent is not part of the Complainant’s dealer network nor is it an authorized or known installer of the Complainant’s products. The website at the Disputed Domain Name appears to be a blog that is not in actual use.

All distinctive elements of the Disputed Domain Name are identical or confusingly similar to the Complainant’s registered trade marks VELUX and SUN TUNNEL SKYLIGHT in which the Complainant has extensive rights, reputation and goodwill. These rights were well known to the Respondent long before the registration of the Disputed Domain Name and the Respondent was well aware of those rights at the time of registration of the Disputed Domain Name, especially as the selection of suffixes chosen by the Respondent are related to the products of the Complainant, i.e. “suntunnel”. The word “velux” in combination with “suntunnel” is very likely to be used by consumers searching for information about the Complainant’s products.

The Respondent has registered the Disputed Domain Name either to tarnish the trade mark of VELUX or SUN TUNNEL SKYLIGHT or misleadingly to divert customers away from the Complainant’s official site. The Respondent has no legitimate interest in the Disputed Domain Name and this is evidenced by the fact that the Respondent has not made an attempt to demonstrate any rights or legitimate interests in the VELUX or the SUN TUNNEL SKYLIGHT mark or indicate that the Respondent has been commonly known by the Disputed Domain Name. The Complainant became aware of the Respondent’s website in January 2012. The Respondent was first notified of the Complainant’s objections by mail dated May 23, 2012 and May 25, 2012. However, the Respondent never reacted or responded to the Complainant’s mails.

(iii) The Respondent intentionally attempts to mislead Internet users away from the Complainant’s official website. This is achieved by creating a likelihood of confusion with the Complainant’s marks and effectively hijacking part of the Complainant’s natural traffic.

The Respondent was found in a prior UDRP decision to have registered a domain name (see VKR Holding A/S v. Stephen Batchelder, Supra) in order to generate additional revenue for the Respondent who was promoting both Velux products and products of the Complainant’s competitors. In this matter, the Respondent has again prevented the Complainant from reflecting marks in a corresponding domain name. The Respondent therefore has no rights or legitimate interests in the Disputed Domain Name and has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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

Paragraph 5(e) of the Rules provides that if a respondent fails to submit a response (as in this case) in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Panel has no doubt that VELUX is a trade mark directly connected with the Complainant’s activities in the business of manufacturing and selling roof windows and blinds. The Complainant’s evidence includes trade mark registrations of the VELUX trade mark in the European Union, the United States and several other countries.

The trade mark VELUX is wholly encompassed within the Disputed Domain Name, which also includes the term “suntunnels” and the gTLD “.com”.

It is well established that the “.com” gTLD may be irrelevant for the purposes of determining whether a domain name is identical or confusingly similar to a trade mark or service mark in which a complainant has rights under paragraph 4(a)(i) of the Policy (see Bradford & Bingley Plc v. Registrant [email protected] 987654321, WIPO Case No. D2002-0499).

In a previous UDRP case F. Hoffmann-La Roche AG v. sysadmin admin, balata.com ltd., WIPO Case No. D2008-0954 concerning the domain names <buy-xenical-000.biz> and <order-xenical-a.biz> the panel stressed that “[…] it is now well-established that the adoption of a trademark in its entirety as a domain name together with other descriptive material does not generally suffice to enable a respondent to overcome an allegation that the domain name is distinguishable from the Trademark in question.”

The term “suntunnels” is commonly used to describe products sold by the Complainant and its competitors and is therefore descriptive. The term causes a link to the Complainants business rather than distinguishing the Disputed Domain Name. “Suntunnel” is also part of the Complainant’s registered trade mark SUN TUNNEL SKYLIGHT.

Therefore, the Panel concludes that the addition of “suntunnels” is not sufficient to refute the confusing similarity between the Disputed Domain Name and the Complainant’s trade mark under paragraph 4(a)(i) of the Policy.

As a result the Panel finds the Disputed Domain Name to be confusingly similar to the Complainant’s trade mark.

Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following:

(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparation to use the domain name in connection with a bona fide offering of goods or services; or

(ii) The respondent has been commonly known by the domain name;

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark at issue.

The Complainant has not licensed or authorized the use of its trade marks to the Respondent and it does not appear that the Respondent is known by the Disputed Domain Name.

The Respondent is not making a noncommercial or fair use of the Disputed Domain Name which is currently being used to host what appears to be an inactive blog. The most recent blog post is dated June 15, 2011.

Based on the Respondent’s default and on the evidence provided in the Complaint, the Panel finds that the above circumstances are not present and the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of renting or selling or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location of a product or service on its website or location.

When the Disputed Domain Name was registered the Complainant’s trade mark VELUX was already internationally recognized in the field of roof windows and blinds. Therefore, the Panel finds it is unlikely that the Respondent could have been unaware of the Complainant’s reputation and business.

The fact that the contents of the website are almost non-existent and have not been updated since June 15, 2011 would imply to this Panel that the Disputed Domain Name has been purely obtained to prevent the Complainant, as the owner of the trade mark, from reflecting the mark in a corresponding domain name and therefore not for a legitimate use.

This conclusion is emphasized by the Respondent’s failure to respond to correspondence from the Complainant prior to this proceeding, its failure to submit a Response in this proceeding and its involvement in a previous UDRP dispute concerning the domain name <veluxsuntunnelskylight.com>.

Accordingly, the Panel finds that the Complainant has proved that the Disputed Domain Name was registered and is being used in bad faith, satisfying the third element of the Policy.

7. Decision

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 <veluxsuntunnels.com> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: July 25, 2012