WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VKR Holding A/S v. Wang Xiao Qin
Case No. D2018-1553
1. The Parties
The Complainant is VKR Holding A/S of Hørsholm, Denmark, represented by Lisbeth Ferdinand, Denmark.
The Respondent is Wang Xiao Qin of Yuncheng, China.
2. The Domain Name and Registrar
The disputed domain name <evelux.tech> is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 12, 2018, 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. On Jul 18, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on July 19, 2018. The Respondent did not comment on the language of the proceeding.
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 and 4, the Center formally notified the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 16, 2018.
The Center appointed Joseph Simone as the sole panelist in this matter on August 23, 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, VKR Holding A/S, is a company incorporated in Denmark and is the owner of the VELUX Group, a manufacturer of roof windows and accessories. It has designed and manufactured roof windows and other products such as sun tunnels, blinds, and solar hot water systems, since the 1940s. Velux (China) Co., Ltd. was founded in 1993. The Complainant has a presence in 40 countries and sells its products in approximately 90 countries.
The Complainant is the owner of 450 trademark registrations throughout the world including or incorporating the word VELUX. They include the following registrations in China:
- VELUX registration number 211706, registered on August 15, 1984 in class 19; and
- VELUX registration number 11340015, registered on January 14, 2014 in class 19.
The disputed domain name <evelux.tech> was registered on March 1, 2018 by the Respondent Wang Xiao Qin, located in China. It previously resolved to a portal website with links in German and English to various products including skylights, roof windows and blinds. It now resolves to an inactive site which states that services for the website have been disabled.
On March 20, 2018, the Complainant sent a cease-and-desist letter to the Respondent, via email, requesting that the Respondent transfer the disputed domain name to the Complainant by April 3, 2018, on the basis of the Complainant's trademark rights. The Respondent did not reply and the Complainant commenced this proceeding.
5. Parties' Contentions
A. Complainant
Identical or confusingly similar
The Complainant contends that the disputed domain name is identical or confusingly similar to the mark VELUX in which it has rights. The Complainant has 450 trademark registrations incorporating VELUX around the world, including in China. The Complainant has advertised and sold its products in China since 1993 on an increasingly extensive scale. It spends over EUR 10 million per year on marketing and in 2016, spent EUR 5.7 million on the purchase of Google AdWords. The Complainant submits that, as a result of widespread advertising, it has established extensive reputation and goodwill in its trademarks and that they are household names. The disputed domain name incorporates the Complainant's mark VELUX with only the addition of the letter "e". In conjunction with the trademark, this does not constitute a generic description or word, and therefore does not reduce the confusing similarity with the Complainant's trademark.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name based on the following. The only distinctive element of the dispute domain name is the Complainant's registered trademark, which is a coined term invented by the Complainant. The Respondent is not commonly known by the disputed domain name. The website to which the disputed domain name resolves is a portal site with links to miscellaneous products including skylights, roof windows, and blinds. The fact that it links to sites offering products that compete with the Complainant's creates a likelihood of confusion which the Respondent has used to attract Internet users to its website or other online locations to generate revenue. Furthermore, the Respondent never replied to the Complainant's cease-and-desist letter.
Registered and used in bad faith
The Complainant submits that the disputed domain name was registered and is being used in bad faith based on the following. The Complainant is using the disputed domain name in the manner described above to attract Internet users to its websites for commercial gain. There is no other basis which can be inferred from the Respondent's selection of the highly distinctive VELUX trademark in the disputed domain name. Additionally, it is foreseeable that potential customers of the Complainant may be led to dealers promoting competitive products by reference to the VELUX trademark, which is likely to cause damage to the Complainant as a result of reduced Internet traffic to its own websites, and ultimately, to result in lost sales. The Respondent is thereby disrupting the Complainant's business, which is reinforced by the Respondent's lack of response.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1 Language of Proceeding
In accordance with paragraph 11 of the Rules:
"…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Therefore, prima facie, the language of the proceeding shall be Chinese. However, the Complainant filed the Complaint in English and has requested that English be the language of the proceeding as this is the most convenient for the Complainant. The Complainant submits that the Respondent did not reply to the cease-and-desist letter sent by email and it expects the Respondent will not reply to WIPO to request Chinese language. As anticipated by the Complainant, the Respondent did not reply to the issue of language.
Noting the aim of conducting proceedings with due expedition while also ensuring that each party is given a fair opportunity to present its case, section 4.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides for certain scenarios which may warrant proceeding in a language other than that of the registration agreement. In this case, the Respondent was notified in both English and Chinese regarding the nature of the proceeding and issue of language, and failed to express a language preference or submit a formal response. Moreover, the website to which the disputed domain name previously resolved was in English and German. While it cannot be inferred solely from this fact that the Respondent is familiar with English, as the Respondent has not pleaded otherwise, the Panel believes there will be no prejudice caused by proceeding in English. In contrast, requiring the Complainant to translate the Complaint to Chinese would cause undue delay and expense. In keeping with the Policy's aim of facilitating a time- and cost-efficient procedure for the resolution of domain name disputes, the Panel determines that it would be appropriate for English to be the language of the proceeding.
6.2 Substantive Issues
A. Identical or Confusingly Similar
Under the first element of the Policy, a complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy).
That is, the complainant must first demonstrate substantive rights in the trademark on which the complaint is based. The Panel is satisfied that the Complainant has adequately demonstrated its rights in the mark VELUX by virtue of its numerous trademark registrations and extensive use worldwide.
A complainant must then demonstrate that the disputed domain name is identical or confusingly similar to the trademark. Per section 1.7 of WIPO Overview 3.0, the test for whether the domain name is identical or confusingly similar to the trademark is a relatively straightforward comparison. A domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,
WIPO Case No. D2004-0962).
When comparing the domain name with the trademark, the Top-Level Domain ".tech" may be disregarded (section 1.11 of WIPO Overview 3.0; F. Hoffmann-La Roche AG v. Domain Admin/xcite,
WIPO Case No. DCC2007-0003).
In this case, the disputed domain name <evelux.tech > incorporates the entirety of the Complainant's trademark VELUX. After removing the ".tech" suffix, the element that remains is the letter "e". The mere addition of a single letter here does not prevent a finding of confusing similarity under the first element (section 1.8 of WIPO Overview 3.0; VKR Holding A/S v. Li Pinglong,
WIPO Case No. D2016-2269; Pfizer inc. v. Blue Viagra,
WIPO Case No. D2004-0732).
Therefore, the Panel is satisfied the disputed domain name is confusingly similar to the Complainant's mark and the first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
A complainant must then demonstrate that the respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject of the complaint (paragraph 4(a)(ii) of the Policy).
Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances which, if found by the panel, will demonstrate a respondent's rights or legitimate interests in the disputed domain name. The Panel accepts the Complainant's submission that the mark VELUX is a coined term invented by the Complainant and that the Respondent, Wang Xiao Qin, is not commonly known by the disputed domain name. There is no evidence of use of the disputed domain name in connection with a bona fide offering of goods or services. Rather, the disputed domain name resolved to a website containing what appears to be pay-per-click links to websites selling products that compete with key products of the Complainant, namely skylights, roof windows and blinds. This strongly suggests that the Respondent intended to rely on confusion with the Complainant's trademark to divert consumers to its website through which it would earn click-through revenue. This cannot be considered legitimate or fair use of the disputed domain name.
The Complainant having made out a prima facie case that the Respondent has no rights or legitimate interests, the burden of production shifts to the Respondent (section 2.1 of WIPO Overview 3.0). As the Respondent did not submit a response, it has failed to present any evidence to establish rights or legitimate interests, and given the above analysis, the Panel believes it has none.
The second requirement of the UDRP is therefore satisfied.
C. Registered and Used in Bad Faith
A complainant must prove that the disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
In assessing bad faith, one relevant factor is whether the Respondent "knew or should have known" of the Complainant's trademark rights, which is a strong inference for bad faith (Volkswagen AG v. Jan-Iver Levsen,
WIPO Case No. D2015-0069; Yahoo! Inc. v. Yahoo-Asian Company Limited,
WIPO Case No. D2001-0051). Given the worldwide reputation and extensive use of the trademark VELUX as well as the obvious correlation between the use to which the website is put and the Complainant's activities, the Panel believes the Respondent was well aware of the Complainant's rights when it registered the disputed domain name.
Furthermore, paragraph 4(b) of the Policy sets out circumstances which, without limitation, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Panel draws attention in particular to subparagraph (iv):
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
The Panel is satisfied that the Respondent, by creating a likelihood of confusion with the Complainant and its trademark VELUX, deliberately registered and used the disputed domain name to attract Internet users to its website with a view to commercial gain, namely pay-per-click revenue. This is disruptive to the Complainant's business and could foreseeably tarnish the VELUX trademark.
Therefore, the Panel concludes that the disputed domain name was registered and used in bad faith.
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 <evelux.tech> be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: September 6, 2018
