WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Qun Shao, Shao Qun

Case No. D2019-2344

1. The Parties

The Complainant is VKR Holding A/S, Denmark, internally represented.

The Respondent is Qun Shao, Shao Qun, China.

2. The Domain Name and Registrar

The disputed domain name <wxvelux.com> is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 30, 2019, 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. Upon the Center’s clarification request of October 1, 2019, the Complainant confirmed that the disputed domain name to be transferred is <wxvelux.com> on the same day.

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 of the Complaint, and the proceedings commenced on October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 24, 2019.

The Center appointed Tobias Malte Müller as the sole panelist in this matter on October 30, 2019. 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 VKR Holding A/S, a Danish corporation who since 1941 continuously manufactures the well-known Velux roof-windows and accessories.

The Complainant is the owner of numerous registered trademarks consisting of or containing the term VELUX, e.g. registered Chinese figurative trademark No. 11340015, registered on January 14, 2014 for goods in class 19, which is in force.

The disputed domain name was registered on July 10, 2019. The website which is connected to the disputed domain name shows pornographic content and online gambling advertisements in the Chinese language.

On August 15, 2019 the Complainant sent a letter to the Respondent requesting immediate transfer of the disputed domain name to the Complainant within September 1, 2019. No response to that letter was received.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant points out that the disputed domain name is confusingly similar to its registered mark. The Complainant’s trademark VELUX is fully included as distinctive element of the disputed domain name. The addition of the two letters “wx” before the term “velux” does not detract or sufficiently distinguish the disputed domain name from the Complainant’s mark.

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant has never authorized the Respondent to use the VELUX mark as part of the disputed domain name. In addition, the website to which the disputed domain name resolves shows inappropriate content to which the Complainant does not wish to be associated with. Finally, the Complainant considers the VELUX trademark as being distinctive that the Respondent must have been aware of those rights at the time of registration of the disputed domain name.

Finally, the Respondent’s registration and use of the disputed domain names constitutes – in the Complainant’s view – bad faith. In fact, according to the Complainant the Respondent has only chosen the disputed domain name including the highly distinctive VELUX trademark in order attract potential customers for commercial gain to his website by means of initial confusion. This is likely to cause damage to the Complainant because of reduced Internet traffic to its own website and, ultimately, lost sales, and thereby a disruption of the Complainant’s business.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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 Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to said mark.

It results from the evidence provided that the Complainant is the registered owner of various trademark registrations consisting of or containing the verbal element VELUX. Reference is made, in particular, to the Chinese figurative trademark No. 11340015, registered on January 14, 2014 for goods in class 19.

The disputed domain name entirely incorporates the Complainant’s VELUX trademark, preceded by the letters “wx” under the generic Top-Level Domain (“gTLD”) “.com”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing. The Panel finds the Complainant’s VELUX mark to be readily recognizable in the disputed domain name.

In the present case, the addition of the letters “wx” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark (see Advance Magazine Publishers Inc. v. Adam Kolodziej, Ketulepa, WIPO Case No. D2018-0832 where the panel held that “the mere addition of non-distinctive text to a complainant’s trademark does not prevent a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy”).

The same is true for the figurative element consisting in a simple red square used as a background for the verbal element VELUX which is therefore a secondary element compared to the prominent and dominant verbal element (see WIPO Overview 3.0, section 1.10).

The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement (see WIPO Overview 3.0, section 1.11.1).

Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to a disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.

First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a website with pornographic content and online gambling advertisements in the Chinese language. Such use cannot – in this Panel’s view – be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such use capitalizes on the reputation and goodwill of the Complainant’s mark and are therefore likely to mislead Internet users. In addition, the Respondent did not submit any evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, the Complainant’s uncontested allegations demonstrate that it has not authorized the Respondent’s use of the VELUX trademarks for registering the disputed domain name and does not want to be associated to the inappropriate content available under this disputed domain name.

Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. In fact, the disputed domain name does not reflect the Respondent’s name.

Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a 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 pursuant to paragraph 4(c)(iii) of the Policy. This becomes particularly evident considering the actual use of the disputed domain name for pornographic content and online gambling advertisements. In addition, the Panel is satisfied that the registered trademark VELUX is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this term.

It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular, but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website (paragraph 4(b)(iv) of the Policy).

It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of attracting, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4). The Panel shares this view and notes that the well-known VELUX trademark is identically included in the disputed domain name. In addition, the disputed domain name is used for the Respondent’s website with pornographic content and online gambling advertisements. The Panel takes this as additional evidence to support the finding that the Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark (see WIPO Overview 3.0, section 3.1.4).

This finding of bad faith registration and use is further supported by the further circumstances resulting from the case at hand, which are the following:

(i) the Respondent’s failure to submit an answer to the warning letter sent prior starting this UDRP case explaining actual or contemplated good faith use;

(ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;

(iii) the implausibility of any good faith use to which the disputed domain name may be put;

(iv) the lack of the Respondent’s own rights to or legitimate interests in the disputed domain name; and

(v) the disputed domain name resolving to a website with commercial pornographic content and adverts.

In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) 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 <wxvelux.com> be transferred to the Complainant.

Tobias Malte Müller
Sole Panelist
Date: November 13, 2019