WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Jerome Brisseau

Case No. D2016-2494

1. The Parties

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

Respondent is Jerome Brisseau of Nantes, France.

2. The Domain Name and Registrar

The disputed domain name <devis-velux.com> (the “Disputed Domain Name”) is registered with OVH (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2016. On December 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and that French is the language of the Registration Agreement. The Center sent an email communication from the Center of December 14, 2016 concerning the language of the proceeding and Complainant requested that English be the language of the proceeding on December 15, 2016. Respondent made no submission in this regard.

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 in both English and French Respondent of the Complaint, and the proceedings commenced on December 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2017. Respondent sent an email communication in French on January 9, 2017. On January 11, 2017, Complainant requested the suspension of the proceeding, which was accordingly suspended on the same day. Following Complainant’s request to reinstate the proceeding of February 6, 2017, the Center reinstated the proceeding on February 8, 2017.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 13, 2017. 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

Complainant, the Danish company VKR Holding A/S, is the owner of the “Velux” Group, a worldwide manufacturer of roof windows and accessories.

Complainant is the holder of, inter alia, the following registered trademarks:

- VELUX, word mark, registered with the Institut National de la Propriété Industrielle (“INPI”) in France under Registration No. 1657202 on April 22, 1991 in classes 6 and 19;

figurative mark, registered with the INPI in France under Registration No. 1666407 on October 25, 1990 in class 19.

Complainant has used the VELUX trademark since at least 1942.

The Disputed Domain Name <devis-velux.com> was registered on February 9, 2015, and has been used to advertise roof windows and connected installation services. More recently, the Panel noted that the Disputed Domain Name redirects to the website “www.devis-couvreur.com”, offering roof installation and maintenance services.

5. Parties’ Contentions

A. Complainant

Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, Complainant claims that the Disputed Domain Name was registered and used in bad faith.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. He initially indicated he would comply with Complainant’s requests, but the proceedings were subsequently reinstated as the Disputed Domain Name remained active and the Parties had not reached an agreement.

6. Discussion and Findings

6.1. Language of the proceeding

As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the administrative proceeding, the Panel may decide on the language of the administrative proceeding, having regard to the circumstances of the administrative proceeding. Indeed, paragraph 11(a) of the Rules reads: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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”.

The Panel notes that although Respondent seems to use the French language, he did not object to Complainant’s request for English to be the language of the proceeding and subsequently mentioned he would accept the measures requested in the Complaint.

In those circumstances, the Panel finds that the use of the English language in the proceedings would not be prejudicial to the interests of Respondent, whereas it would be a disadvantage for Complainant to be forced to translate the Complaint. Therefore, the Panel decides to use the English language in the present proceedings.

6.2. Substantive Issues

While the Panel notes Respondent’s consent to the requested remedy in his informal communication, the Panel also considers Complainant’s later statement that no agreement has been reached between the Parties and will proceed to decide this case on the merits.

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the proceedings are administrative, the standard of proof is the balance of probabilities.

Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i. the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii. 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 will deal with each of these requirements in turn.

A. Identical or Confusingly Similar

To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there are VELUX trademarks in which it has rights. The trademarks have been registered and used in various countries.

The Disputed Domain Name, <devis-velux.com>, reproduces Complainant’s trademark VELUX in its entirety, adding a hyphen and the generic term “devis” (which is the French word for “quote” or “cost estimate”). The Panel is of the opinion that the mere addition of non-distinctive text and a hyphen to a complainant’s trademark does not avoid a finding of confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name

<karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software). The addition of the word “devis” may even add to the association to Complainant, as Internet users looking for the purchase and installation of roof windows sold under Complainant’s VELUX trademark would obviously search for a cost estimate.

Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.

It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s registration and use of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.

In addition, the Panel is of the opinion that Respondent is not “making a legitimate noncommercial or fair use of the domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy, paragraph 4(c)(iii). It appears that Respondent has been using the Disputed Domain Name to advertise roof windows and connected installation services. According to the Panel this cannot be considered as fair use of the Disputed Domain Name, even though it is unclear whether Respondent offers the installation of Complainant’s products. Indeed, either Respondent offers the installation of Complainant’s products without Complainant’s authorization and any disclosure of the lack of its relationship with Complainant, or Respondent offers competing products and services.

Moreover Respondent’s willingness to transfer the Disputed Domain Name is further indication of Respondent’s lack of rights or legitimate interests.

Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a 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 the web site or location or of a product or service on the web site or location.

In the present case, it is inconceivable that Respondent was unaware of Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes Complainant’s distinctive trademark in its entirety and simply adds a descriptive word. As a result, it is apparent that Respondent had Complainant in mind when registering the Disputed Domain Name.

Respondent is using Complainant’s trademark without authorization to offer services that are linked to Complainant’s products and services. Doing so, Respondent tries to intentionally attract Internet users to visit his website for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the web site (see Simyo GmbH v. José Castrellón, CyberCast, WIPO Case No. D2014-1660).

Finally, Respondent did not respond to Complainant’s cease-and-desist letter and did not formally take part in the administrative proceedings except to indicate its willingness to transfer the Disputed Domain Name to Complainant. According to the Panel, these are additional indications of Respondent’s bad faith.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being 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, <devis-velux.com>, be transferred to Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: February 27, 2017