The Complainant is VKR Holding A/S of Horsholm, Denmark, internally represented.
The Respondent is Eric Schoell, Window Medics Plus of Kingston, Massachusetts, United States of America (“United States”).
The disputed domain names <velux-repair.com> and <veluxskylight.repair> are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 1, 2019 in respect of the disputed domain name <velux-repair.com>. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <velux-repair.com>. On the same date, 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 March 6, 2019, the Complainant submitted a first amended Complaint adding the disputed domain name <veluxskylight.repair>. On the same date, the Center sent a verification request to the Registrar in respect of the disputed domain name <veluxskylight.repair> and 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. The Complainant submitted a second amended Complaint on March 12, 2019. In response to a request for clarification by the Center, the Complainant sent an email to the Center on March 15, 2019.
The Center verified that the Complaint together with the first and second amended Complaints 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 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on April 23, 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.
The Complainant has manufactured roof windows and doors under the name “Velux” since 1941. Its products are sold in some 90 countries.
The Complainant owns many trade marks for “Velux” worldwide including United States trade mark no.1492904, filed December 3, 1986, registered June 21, 1988, in classes 6, 19 and 20.
On May 5, 2015, in a previous case between the Complainant and the Respondent, a UDRP Panel ordered transfer of the domain name <veluxrepair.com> to the Complainant. See VKR Holding A/S v. Eric Schoell, Window Medics Plus,
WIPO Case No. D2015-0359 (“the <veluxrepair.com> Case”).
The disputed domain name <velux-repair.com> was registered on December 27, 2018. The disputed domain name <veluxskylight.repair> was registered on January 31, 2019.
On February 14, 2019, the Complainant emailed a legal letter to the Respondent. No response was received.
As of May 7, 20191 , the disputed domain names redirected to a webpage at “www.defog.com” with the name “WINDOW MEDICS PLUS” in the header, beneath which was the main heading: “SKYLIGHT GLASS, WINDOW GLASS REPLACEMENT SPECIALISTS WINDOW MEDICS PLUS. We Fix Foggy Skylights, Windows & Doors”. The content on the page included the following: “…We have all manufactures [sic] EXACT glass dimensions for all skylight manufacturers. Originally trained by Velux and Roto, we can fix your Foggy Skylights, windows and doors!...”
The following is a summary of the Complainant’s contentions:
The Complainant is a well-known brand with a reputation worldwide including in the United States, where the Complainant has significant turnover and it engages in substantial marketing activity.
The disputed domain names are confusingly similar to the Complainant’s trade mark.
The disputed domain names entirely incorporate the Complainant’s trade mark. The additional words “repair” and “skylight” create a link to the Complainant’s business rather than distinguishing the Respondent’s business from that of the Complainant.
The Respondent lacks rights or legitimate interests in the disputed domain names.
The Complainant did not authorise the Respondent to register the disputed domain names.
The Respondent was aware of the Complainant’s rights when it registered the disputed domain names.
The Respondent registered and is using the disputed domain names in bad faith.
The Respondent has used the disputed domain names to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks. This is likely to cause the Complainant to lose sales on its own website and thereby disrupt the Complainant’s business.
The Complainant infers that the Respondent’s motive was to induce the Complainant to offer a “ransom” for the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
The Complainant has established rights in the mark VELUX by virtue of its registered trade mark as well as unregistered trade mark rights deriving from the extensive and worldwide use of that name.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain names and, accordingly, the addition of the descriptive terms “repair” and “skylight” does not avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trade mark
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
As explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Respondent’s website indicates that it is using the disputed domain names to repair the Complainant’s products. The consensus view of UDRP panels – as expressed in section 2.8 of WIPO Overview 3.0 – is that to establish a bona fide offering of services in such circumstances, the Respondent must comply with certain requirements (known as the “Oki Data test”), including use of the disputed domain names to repair only products supplied by the Complainant.
The content of the Respondent’s website as outlined in section 4 above indicates that in fact it is using the disputed domain names to offer a repair service which extends to goods supplied by other manufacturers. For example, the Respondent mentions that it possesses the exact glass dimensions for “all skylight manufacturers”. Certainly, the Respondent’s website does not expressly restrict the repair service to the Complainant’s products – despite the fact that lack of such a restriction was one of the main reasons why the Respondent lost the <veluxrepair.com> Case.
Accordingly, the Panel considers that the Respondent’s use of the disputed domain names cannot be said to be bona fide.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
The Panel considers that the disputed domain names have been registered and used in bad faith.
Despite having lost the <veluxrepair.com> Case, the Respondent has now registered two similar disputed domain names incorporating the Complainant’s trade mark and has used them in a similar manner – to offer a repair service for the products of different window manufacturers. Furthermore, unlike in the <veluxrepair.com> Case, the Respondent has not sought to defend itself by filing a Response.
For the same reasons given by the panel in the <veluxrepair.com> case, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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 names <velux-repair.com> and <veluxskylight.repair> be transferred to the Complainant.
Adam Taylor
Sole Panelist
Date: May 7, 2019
1 The Complainant exhibited a screenshot of a webpage at “www.defog.com” dated February 26, 2019, but without identifying which of the disputed domain names redirected to this page. On May 7, 2019, the Panel reviewed the websites at both disputed domain names as it is entitled to do - see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel established that, on this date, each of the disputed domain names redirected to “www.defog.com”.