WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Step Above Home Improvement

Case No. D2012-0584

1. The Parties

The Complainant is VKR Holding A/S of Horsholm, Denmark represented by MAQS Law Firm Advokataktieselskab, Denmark.

The Respondent is Step Above Home Improvement of West Lebanon, New Hampshire, United States of America (“U.S.”)

2. The Domain Names and Registrar

The disputed domain names <velux.pro> and <veluxservice.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 21, 2012. On March 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 21, 2012, the Registrar transmitted by email to the Center its verification response confirming that:

(a) it is the Registrar for the disputed domain names;

(b) the disputed domain names are both registered in the name of the Respondent and its contact details are correct;

(d) both disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to both disputed domain names.

The Center verified that the Complaint satisfied the formal requirements of the Policy, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2012.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 23, 2012. 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

According to the Complaint, the Complainant has continuously carried on business as a designer and manufacturer of its Velux roof windows and other products since 1941. The Complainant has a presence in some 40 countries throughout the world, and sells in approximately 90 countries. The business has grown substantially to become a well-known brand worldwide and is controlled from Denmark.

Annex E to the Complaint consists of a listing of over 9 pages of the trademarks the Complainant has registered throughout the world for, or including, VELUX including seven trademarks in the U.S. registered before the disputed domain names were registered.

The disputed domain names resolve to a website headed “Green Mountain Skylights & Solar”. This business claims to be selling, installing and servicing VELUX brand solar systems, skylights, sun-tunnels and roof windows.

Over the course of 2009, the Respondent registered six domain names based on VELUX on the dates indicated:

- <veluxinstalled.com> - 22 January 2009,

- <velux.pro> - 20 July 2009,

- <veluxreplacements.com> - 20 July 2009,

- <veluxservice.com> - 20 July 2009,

- <veluxskyligts.net> - 21 July 2009,

- <veluxsolarpro.com> -7 November 2009.

There has been correspondence between the Complainant and its representatives on one hand and, on the other, the Respondent. This culminated in the Respondent agreeing to transfer the disputed domain names to the Complainant in February 2011. The date of the agreement is not entirely clear from the record. Annex K of the Complaint, however, includes an email from the Respondent’s administrative contact dated May 25, 2011 providing some of the authorisation codes required to effect the transfer and professing some puzzlement about the difficulties in completing the transfer.

In the event, the transfer of the domain name <veluxskyligts.net> was completed, the registrations of the domain names <veluxinstalled.com>, <veluxreplacements.com> and <veluxsolarpro.com> expired. Although the Respondent provided to the Complainant authorisation codes for the transfer of the disputed domain names, the Complainant says that transfer could not be completed due to the failure of the Respondent to provide an active email address.

The Complainant sent further correspondence on several occasions seeking to remedy this deficiency, but received no reply.

One of the links on the website to which the disputed domain names resolve is “Our Parent Company”. This takes the browser to a website at “www.stepabovehomeimprovement.com”. This website appears to be a generic, placeholder page for various terms based on “Step Above”. A banner appears at the top of the page:

“This domain has recently been listed in the marketplace at domainnamesales.com. Click here to inquire or call [X XXX XXX XXXX].”

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain names, the Complainant must demonstrate each of the following:

(i) the disputed domain names are identical or confusingly similar to a trademark 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

No response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar). Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to decide the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Numerous UDRP panels have accepted that an order for transfer is appropriate when consented to by a respondent, either immediately or on a showing of a prima facie case by the complainant in such circumstances. See, e.g., Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg, WIPO Case No. D2006-1336; Amgen Inc. v. Texas International Property Associates, WIPO Case No. D2007-0155; Levantur, S.A. v. Rarenames, WebReg, WIPO Case No. D2007-0857; Instituto del Fondo Nacional de la Vivienda para los Trabajadores v. Whois Privacy Protection Service Inc., Demand Domains, Inc., WIPO Case No. D2007-0917; Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343; and, Tom Stoppard, Tom Stoppard Limited v. Texas International Property Associates, WIPO Case No. D2007-1404.

In the present case, the Respondent has not submitted a formal or an informal consent to transfer. However, the Complainant has submitted evidence that prior to the filing of the UDRP proceeding the Respondent has agreed to transfer the disputed domain names to the Complainant and the Respondent has not disputed that.

In this case, the Complainant has clearly proved entitlement to registered trademarks for VELUX, including trademark registrations in the U.S. where the Respondent is apparently located. These registrations include Trademark No. 2,981,365 for VELUX in relation to goods and services in International Classes 9, 35, 37, 41 and 42. The services in Class 37 include installation, maintenance and repair of windows, doors and ventilation. This trademark was filed on May 7, 2002 and registered on August 2, 2005, claiming first use in commerce in the U.S. in 2001 in Class 37. All of these dates are well before the Respondent registered the disputed domain names.

The disputed domain name <velux.pro> is identical to the Complainant’s registered trademarks for VELUX, disregarding the purely functional addition of the gTLD, “.pro”.

This Panel finds there can be no doubt that the disputed domain name <veluxservice.com> is confusingly similar to the Complainant’s proved rights in VELUX alone. VELUX is clearly the distinctive component of that disputed domain name; the addition of the generic word “service” does not dispel any potential for confusion.

The Respondent is not affiliated with or licensed by the Complainant in any way. Neither of the disputed domain names can be said to be derived from the Respondent’s own name and the Respondent has not sought to suggest any basis for derivation. Insofar as the nature of the Respondent’s activities can be gleaned from the website to which both the disputed domain names resolve, it would appear that the Respondent is purporting to offer services falling directly within the scope of the Complainant’s registered trademarks, especially U.S. Trademark No. 2,981,365.

In these circumstances, the Complainant has raised a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names and, in addition, that they have been registered and used in bad faith. The Respondent has not sought to rebut that case. To the contrary, on the record in this case it appears that the Respondent has agreed to transfer the disputed domain names to the Complainant although it has not been possible to complete that.

In the circumstances, the Panel finds that the Complaint has been made out and it is appropriate to order transfer of the disputed domain names.

6. 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 names, <velux.pro> and <veluxservice.com>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Dated: May 7, 2012