The Complainant is VKR Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Host Master, Transure Enterprise Ltd, United States of America (“United States”).
The disputed domain name, <variovelux.com>, is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2021, 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 May 5, 2021, 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 May 7, 2021.
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 May 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2021.
The Center appointed David Stone as the sole panelist in this matter on June 15, 2021. 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 the parent company of the VKR Group, which, through its subsidiaries the Velux Group and the Dovista Group, produces a range of products including roof windows and skylights. The founder of the VKR Group invented the Velux window in the 1940s. Today the VKR Group has thousands of employees throughout 40 countries.
The Complainant owns the following trade marks, among others:
- VARIO BY VELUX: International registration number 1495426, registered on June 7, 2019, in Nice classes 6, 11, 19, 20, 22, 24, and 37;
- VELUX: United States registration number 1091446, registered on May 16, 1978, in Nice class 19; and
- VELUX: Danish registration number VR 1942 00950, registered on October 3, 1942, in Nice classes 6 and 19.
The Complainant promotes its VELUX-branded products via the website “www.velux.com”, which, according to web analytics provider SimilarWeb, received almost 150,000 visits between October 2020 and March 2021. Approximately 12,000 of these (7.89%) were from the United States. The Complainant also operates the website <vario.velux.com>, at which it promotes the products it offers under its VARIO BY VELUX brand. These products are also promoted on Instagram and Facebook.
The disputed domain name was registered on June 28, 2020. The disputed domain name hosts a website featuring advertising links to goods and services that compete with the Complainant’s offering.
On July 29, 2020, the Complainant sent the Respondent a cease-and-desist letter, informing the Respondent that its unauthorised use of the Complainant’s VELUX marks violated the Complainant’s rights, and asking the Respondent to transfer the disputed domain name to the Complainant voluntarily. The Respondent replied with an offer to sell the disputed domain name to the Complainant for USD 250. (The Panel assumes from the available interparty correspondence that USD was the intended currency.) The Complainant refused this offer, and there was no further direct correspondence between the parties.
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights, namely VARIO BY VELUX (the Mark). Disregarding the Top-Level Domain, “.com”, the disputed domain name differs from the Mark only by the absence of the word “by”. Furthermore, the disputed domain name differs from the Complainant’s subdomain <vario.velux.com> only by the absence of a full stop or period.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than a year after the Mark, and decades after the Complainant’s VELUX marks. From the registration information on the disputed domain name, and the fact that the Respondent initially used a privacy screen, the Complainant infers that the Respondent is not commonly known by the disputed domain name. The Complainant has not authorised the Respondent to use the Complainant’s marks in any way. The Respondent is in fact using the disputed domain name to host a website featuring pay-per-click advertisements for products similar to those produced by the Complainant, and one of these advertisements links to a competitor of the Complainant. This is not a use of the disputed domain name such as would give rise to rights or legitimate interests. The Complainant also argues that the Respondent’s offer to sell the disputed domain name to the Complainant for an amount in excess of the Respondent’s out-of-pocket costs is evidence of a lack of such rights or interests.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s VELUX and VARIO BY VELUX marks are known internationally, and the associated goods and services have been marketed using these marks for, in some cases, decades, and certainly before registration of the disputed domain name. Given the similarity between the disputed domain name and the Mark (and the even closer similarity between the disputed domain name and the Complainant’s <vario.velux.com> subdomain), it is highly unlikely that the Respondent would have chosen to register the disputed domain name without being aware of the Complainant’s brand and business, and intending to target the Complainant. The Respondent has used the disputed domain name in an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Mark and using the website associated with the disputed domain name to host advertising links.
As further evidence of the Respondent’s bad faith, the Complainant also points out that the Respondent appears to have a history of cybersquatting and to be the registrant of a variety of other domain names featuring the trade marks of third parties. Finally, the Complainant argues that the Respondent’s failure to respond positively to the Complainant’s cease-and-desist letter, and to offer to sell the disputed domain name at an excessive price rather than transfer it voluntarily, is evidence of bad-faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
On the evidence provided by the Complainant, the Panel is satisfied that the Complainant has rights in the VELUX and VARIO BY VELUX marks. In assessing the similarity between the disputed domain name and the Complainant’s marks, it is permissible to ignore the Top-Level Domain. In this case, as the Complainant contends, the disputed domain name and the Mark then differ only by the presence in the Mark of the word “by”. The absence of this word in the disputed domain name does not prevent a finding of confusing similarity between it and the Mark, the dominant elements of which are still clearly recognisable in the disputed domain name. The disputed domain name is therefore confusingly similar to the Mark (see Wilmar Corporation v. Performance Tools/Domains By Proxy, Inc., WIPO Case No. D2007-1243), and the Panel concludes that the condition in paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(c) of the Policy sets out the criteria that determine whether a domain name registrant has rights or legitimate interests in a domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the disputed domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant makes out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent has provided no evidence to contradict it. On the facts and contentions before the Panel, the Respondent is not commonly known by the disputed domain name, is not authorised to use the Complainant’s marks, and cannot claim any rights or legitimate interests in them by virtue of prior registration.
As the Complainant contends, the Respondent’s only use of the disputed domain name is to host a website featuring advertising links to products and, in one case, a business that competes with the Complainant’s offering. Given the confusing similarity between the Mark and the disputed domain name, the Panel is satisfied that this use of the disputed domain name is intended to mislead Internet users familiar with the Complainant and so to generate pay-per-click advertising revenue for the Respondent by exploiting the Complainant’s reputation and goodwill. Neither this, nor the Respondent’s attempt on receipt of the cease-and-desist letter to sell the disputed domain name to the Complainant, is either a bona fide offering of goods or services by the Respondent, or a legitimate noncommercial or fair use of the disputed domain name (see Kabushiki Kaisha ASICS v. SC Gaticonstruct, WIPO Case No. DRO2008-0010, section 2.9 of the WIPO Overview 3.0 and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
The Panel therefore concludes that the condition in paragraph 4(a)(ii) of the Policy is satisfied.
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
In the absence of any contradictory contention by the Respondent, the Panel is satisfied by the Complainant’s argument that the Respondent registered and is using the disputed domain name in bad faith. The similarity between the Mark and the disputed domain name, and the similarity between the links advertised on the associated website and the products marketed by the Complainant, are such that the Panel can conceive of no explanation for the Respondent’s behaviour other than that it registered and is using the disputed domain name to divert Internet traffic for commercial gain. The Complainant’s VELUX brand, which features in all the registrations listed above, is famous, and for the Respondent innocently to register a domain name confusingly similar to VARIO BY VELUX, and use it to set up a website advertising products similar to those sold by the Complainant, is too great a coincidence for the Panel to contemplate. See Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
This suffices to satisfy the condition in paragraph 4(a)(iii) of the Policy, but the Panel also notes that the Respondent’s attempt to sell the disputed domain name to the Complainant for what is presumably more than its out-of-pocket costs is also indicative of bad faith, under paragraph 4(b)(i).
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, <variovelux.com>, be transferred to the Complainant.
David Stone
Sole Panelist
Date: June 23, 2021