registered on September 3, 1996 (the “Trade Mark”).The Complainant is VKR Holding A/S, Denmark, represented by Lisbeth Ferdinand, Denmark.
The Respondent is Private Registration United States of America (“United States”) / Joe Hawtin, United States.
The disputed domain name <velux5oceans.com> (the “Disputed Domain Name”) is registered with DropCatch.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2020. On March 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 25, 2020.
The Center verified that the Complaint together with the amended 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 March 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. The Response was filed with the Center on March 26, 2020.
The Center appointed John Swinson as the sole panelist in this matter on April 2, 2020. 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.
The Complainant is VKR Holding A/S, a company incorporated in Denmark. The Complainant is a manufacturing company that specialises in roof windows and skylights. According to the Complainant, the Complainant has been in operation since 1941, has a presence in some 40 countries and sells in approximately 90 countries around the world. The Complainant is the sponsor of the VELUX EFH Champions League (a handball competition) and the VELUX 5 Oceans Race (a yacht race).
The Complainant is the owner of a large number of trade mark registrations for VELUX in numerous countries, including United States registered trade mark number 1997965 for registered on September 3, 1996 (the “Trade Mark”).
The Complainant also operates a website at “www.velux.com”.
The Respondent is Joe Hawtin, an individual of the United States. At the time of the Complaint, the Respondent operated a review website going by “Velux5Oceans” at the Disputed Domain Name, which provided “best of” lists in the water sports industry. At the time of writing this decision, the Disputed Domain Name redirects to <solarsailor.com>, a similar review website. The Disputed Domain Name was registered on October 28, 2019, supposedly after the previous owner let it expire.
The Complainant makes the following submissions.
Identical or Confusingly Similar
The distinctive element of the Disputed Domain Name is “velux”, which is identical to the Trade Mark. The words “5oceans” cause a link to the Complainant’s business. As a result, the Disputed Domain Name is confusingly similar to the Trade Mark.
Rights or Legitimate Interests
The Respondent is Joe Hawtin. The Disputed Domain Name was registered by the Respondent without the Complainant’s knowledge or permission. The Respondent is using the Disputed Domain Name to advertise the Respondent’s own event and this creates a likelihood of confusion with the Trade Mark and the Complainant’s business. The Trade Mark is very distinctive and the Complainant believes the Complainant’s rights were known to the Respondent before registration of the Disputed Domain Name. Therefore the Complainant believes the Respondent has used the Disputed Domain Name to intentionally attempt to attract for commercial gain, Internet users to its website. This constitutes illegal commercial use and thus infringement of the Complainant’s trade mark rights.
The Complainant sent the Respondent a letter on February 20, 2020, which detailed the Complainant’s objections. The Respondent never responded to the Complainant’s email.
Based on the above, the Complainant can see no legitimate or fair use of the Disputed Domain Name. The Respondent’s purpose of using the Trade Mark is to attract customers to its website and generate revenue, and such use is commercial.
Registered and Used in Bad Faith
By using the Disputed Domain Name in the manner described above, the Respondent intentionally attempts to attract, for commercial gain, Internet users to the website which resolves from the Disputed Domain Name. This is achieved by creating a likelihood of confusion with the Trade Mark and effectively hijacking part of the Complainant’s natural traffic to generate additional revenue for the Respondent, who is using the Disputed Domain Name to forward consumers to the Respondent’s own website.
There is no other basis for the Respondent’s selection of the highly distinctive VELUX Trade Mark in the Disputed Domain Name. 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.
It could also be inferred that that the Respondent disrupts the Complainant’s business in the manner described above in the hope that it might induce the Complainant to offer a ransom for the Disputed Domain Name.
The Respondent makes the following submissions.
The Respondent acquired the Disputed Domain Name from a broker. The Disputed Domain Name was chosen for search engine optimization purposes, not for the domain name itself. The Disputed Domain Name is valuable because of the vast number of websites linking to it (“backlinks”). These backlinks provide a positive signal to Google that this website is authoritative and should have its content ranked higher than lesser competing websites. These old backlinks do not provide any traffic to the website.
The use of VELUX in the Disputed Domain Name is completely irrelevant to the website at the Disputed Domain Name. No visitor will confuse the website with the Complainant’s brand. The purpose of the website is explicitly stated at the top of the website and the brand logo on the website is completely different to the Trade Mark. The website at the Disputed Domain Name is a review website that provides “best of” lists in the water sports industry. The Respondent has not, and will not, have any reviews of the Complainant’s product lines or products. The Respondent does not review windows, roof windows, skylights etc.
The Respondent was free to register the Disputed Domain Name because it was not renewed by the previous owner.
Contrary to the Complainant’s submissions, the Respondent’s website does not redirect traffic intended for the Complainant’s website. According to Google Search Console Analytics, there has been no traffic from searches for VELUX or any associated terms.
The Complainant’s contention that the Respondent hoped it might induce the Complainant to offer a ransom is baseless and offensive. The Respondent has built a legitimate business on the Disputed Domain Name and does not want to give up the Disputed Domain Name. As a gesture of good faith, the Respondent has put a disclaimer on the website.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Where a domain name incorporates the entirety of a trade mark, or where at least 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 (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Disputed Domain Name incorporates the Trade Mark in its entirety with the additional term “5oceans”. This adds to the similarly because the Complainant sponsors a yacht race known as Velux 5 Oceans. The Panel considers that the domain is confusingly similar to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Respondent’s case is, in summary, that:
- the Respondent registered the Disputed Domain Name for search engine optimization purposes, not because of the Trade Mark or the words in the domain name itself – the Disputed Domain Name is valuable because other websites link to it, and this provides a signal to Google that the website should have its content ranked higher than lesser competing websites;
- the use of the Trade Mark in the Disputed Domain Name is completely irrelevant to the Respondent’s website, which the Respondent uses to review products relating to watersports;
- the Respondent does not operate in the same industry as the Complainant or review any products in that industry; and
- the Respondent was entitled to register the Disputed Domain Name because it was not renewed by the previous owner.
It is clear that the Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name. The Panel notes that the review website at the Disputed Domain Name previously operated under “Velux5Oceans”, but the Respondent has not established (or argued that) the Respondent is commonly known by the Disputed Domain Name (see section 2.3 of WIPO Overview 3.0). It is also clear from the Respondent’s website that the Respondent receives revenue from providing links to products on Amazon through the Amazon affiliate advertising program, and therefore the Respondent has not been making a noncommercial or fair use of the Disputed Domain Name.
The question for the Panel is therefore whether the Respondent’s use of the Disputed Domain Name to host a review website is a bona fide offering of goods or services. The Panel considers that such use is not bona fide in these circumstances, because the Respondent’s reason for purchasing the Disputed Domain Name (and for choosing a name for the site that corresponds to the Disputed Domain Name) was to capitialise on the reputation and goodwill inherent in the Trade Mark, including as signified by the past Google ranking of the website. The Panel considers that it is irrelevant that the Respondent’s website does not relate to windows or review window/roofing products. The Complainant used the Trade Mark in connection with sponsoring a yacht race, and the Respondent reviews and advertises boating and water sports related products, including those used by people who own yachts. The Panel finds that the Respondent registered the Disputed Domain Name to capitalise on the reputation and connection of the Complainant with the VELUX 5 Oceans Race.
Accordingly, the Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating since 1941 and has owned registered trade marks since 1942. The Complainant has owned a registered trade mark in the United States, where it appears that the Respondent is based, since at least 1996. The Complainant has built up a significant reputation worldwide.
The Disputed Domain Name was registered on October 28, 2019. The Respondent does not deny being aware of the Trade Mark or the Complainant at the time of registration. In fact, the Respondent has indicated that he purchased the Disputed Domain Name for search engine optimisation purposes, to take advantage of the vast number of websites linking to it, which increases the rank of the website according to Google’s ranking system.
In London Court of International Arbitration (LCIA), International Chamber of Commerce (ICC), Singapore International Arbitration Centre (SIAC), Arbitration Institute of the Stockholm Chamber of Commerce (SCC), American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) v. ICSID Lawyers, LLC, WIPO Case No. D2013-0685, the Panel noted:
“While it may be legal to register descriptive domain names to build a business or to improve a business’s rankings on Google (the Panel makes no findings on this point), it is not permitted under the UDRP to deliberately register a domain name that by its very nature will create a likelihood of confusion with a complainant’s trademark for commercial purposes (unless a registrant itself has demonstrated rights or legitimate interests, which is not the case here).”
In this case, the Respondent deliberately registered the Disputed Domain Name with the Complainant in mind, to capitalise on the Complainant’s reputation (including its reputation in connection with a yacht race) by attracting Internet traffic. See Intagent LLC v. Dominor LLC, WIPO Case No. D2008-1878 and Qantas Airways Limited v. Domain Admin, Whizzm, WIPO Case No. D2019-1652. The Panel finds that the Disputed Domain Name was registered in bad faith.
On the issue of use in bad faith, at the time of the Complaint, the Disputed Domain Name resolved to a review website under “Velux5oceans”. The Disputed Domain Name now redirects to another website (at <solarsailor.com>) with nearly identical content but now going by SOLARSAILOR. The Respondent argues that no visitor to the Respondent’s website would confuse the website with the VELUX brand, because the purpose of the website (i.e., a review website) is written at the top of the homepage.
Even if the Respondent’s submission is correct, it does not prevent a finding of bad faith. As the Respondent admits, the Disputed Domain Name attracts users to the Respondent’s website, and the Panel finds that this is because the Disputed Domain Name draws on an association with the Trade Mark. An Internet user viewing the Disputed Domain Name may incorrectly assume that the Disputed Domain Name is somehow connected to the Complainant or the VELUX 5 Oceans Race (which the Complainant sponsors). While the Respondent submits (based on evidence from Google Search Console Analytics) that no traffic has been directed to the Respondent’s website from searches of VELUX or related products, this is not the only way that Internet users could reach the website. For example, the Respondent admits that numerous other websites link to the Disputed Domain Name, so Internet users may click on such links expecting to be directed to a website connected with the Complainant or the yacht race sponsored by the Complainant, or past users may have bookmarks stored to the prior website at the Disputed Domain Name. Moreover, paragraph 4(b)(iv) of the Policy speaks of “attempt[ing] to attract” Internet users based on an association with the complainant’s mark; this is what the Respondent has done.
As discussed above, the Respondent earns commissions from posting links to products on Amazon and therefore uses the Disputed Domain Name for commercial gain.
The website to which the Disputed Domain Name directs includes the following notice:
“SolarSailor.com is a participant in the Amazon Associates Program, an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon.com”
The Respondent’s website is not purely a noncommercial review website, but a sophisticated SEO website used to generate commissions from Amazon.
The Respondent is therefore attempting to attract Internet users to its website, for commercial gain, by using the Disputed Domain Name to create a likelihood of confusion with the Trade Mark. This confusion exists regardless of the content of the Respondent’s website and regardless of whether an Internet user would, upon viewing the Respondent’s website, become aware that it was not connected to the Complainant or the Trade Mark (see Broan-Nutone, LLC v. Ready Set Sales, WIPO Case No. D2010-0920 and London Court of International Arbitration (LCIA), International Chamber of Commerce (ICC), Singapore International Arbitration Centre (SIAC), Arbitration Institute of the Stockholm Chamber of Commerce (SCC), American Arbitration Association/International Center for Dispute Resolution (AAA/ICDR) v. ICSID Lawyers, LLC, WIPO Case No. supra). This is evidence of bad faith under the Policy.
The Panel also considers that it is possible that an Internet user, when visiting the Respondent’s website (or at least the Respondent’s former website that used the term “Velux5oceans”) could assume that the Respondent has an affiliation with the Complainant or with the VELUX 5 Oceans Race, which is sponsored by the Complainant. The Panel notes that the Respondent’s website contains a disclaimer that it is not connected to the VELUX brand (which the Respondent placed on the website after receiving notice of this dispute). However, this does not cure the Respondent’s bad faith and may also be an admission by the Respondent that Internet users visiting the Respondent’s website may be confused (see section 3.7 of WIPO Overview 3.0).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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, <velux5oceans.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: April 16, 2020