VKR Holding A/S v Akanbi Danmole

WIPO Case No. DCO2022-0109

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

VKR Holding A/S v. Akanbi Danmole

Case No. DCO2022-0109

1. The Parties

The Complainant is VKR Holding A/S, Denmark, represented by CSC Digital Brand Services Group AB,

Sweden.

The Respondent is Akanbi Danmole, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <velfac.co> (the “Domain Name”) is registered with Sav.com, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30,
2022. On December 1, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Domain Name which
differed from the named Respondent (Privacy Protection) and contact information in the Complaint. The
Center sent an email communication to the Complainant on December 2, 2022, 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 December 7, 2022.

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 December 12, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2023.

The Center appointed Nicholas Smith as the sole panelist in this matter on January 17, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a Danish company, founded in 1941, that through various national subsidiaries offers windows (such as roof windows, skylights and vertical windows) and related products (such as thermal solar energy systems and sun screening products) for domestic, housebuilding and commercial customers. As of 2021 the Complainant reported DKK 26.1 billion in revenue and DKK 4.9 billion in net profit.

The Complainant is the owner of trade marks in various jurisdictions consisting of the word VELFAC (the
“VELFAC Mark”), including a Norwegian Industrial Property Office registration for the VELFAC Mark
(Registration No. 60644, registered November 29, 1962) for goods in classes 6 and 19.

The Complainant promotes and provides information about its VELFAC brand and products at the domain names <velfac.com>, <velfac.dk> and <elfac.co.uk>.

The Domain Name was registered on April 20, 2022. Prior to the commencement of the proceeding, the Domain Name resolved to a website offering pay-per-click advertisements that referred to windows and window replacement services.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i)      that the Domain Name is identical or confusingly similar to the Complainant’s VELFAC Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the VELFAC Mark, having registered the VELFAC Mark in the European of the VELFAC Mark and the “.co” country code Top-Level Domain (“ccTLD”).

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the VELFAC Mark nor is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Instead, the Domain Name resolves to a pay- per-click site that makes reference to the Complainant’s products as well as being offered for sale for a sum exceeding out–of-pocket expenses that may have been incurred by the Respondent. Such uses of the Domain Name cannot and do not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name and therefore the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.

There is no plausible circumstance under which the Respondent could legitimately use the Domain Name, which consists of the coined VELFAC Mark, other than in bad faith. By using the Domain Name to resolve to a website that offers links to competing products, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the VELFAC Mark, having a registration for the VELFAC Mark as a trademark in Norway, among other jurisdictions. Disregarding the “.co” TLD as an essential element of any domain name, the Domain Name is identical to the VELFAC Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial

gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the
Complainant to register or use the Domain Name or to seek the registration of any domain name
incorporating the VELFAC Mark or a mark similar to the VELFAC Mark. There is no evidence that the
Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. The use of the Domain Name for a parking page with pay-per-click links unrelated to a dictionary meaning of the Domain Name is not a bona fide offering of goods or services nor noncommerical. The Panel notes the

statements in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the question of whether “parked” pages comprising pay-per-click links support respondent rights or legitimate interests. The section 2.9 of the WIPO Overview notes that:

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“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page
comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on
the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links

genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to
trade off the complainant’s (or its competitor’s) trade mark.”

In the present case, the Domain Name has no inherent meaning and hence the Respondent’s use of the confusingly similar Domain Name to host a parking page with pay-per-click links referring to the Complainant’s products does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the Domain Name.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds

that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph

4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

1. circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

2. the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

3. the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv)    by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Domain Name was registered well after the VELFAC Mark was first used and registered. The Panel finds, on the balance of probabilities, that the Respondent would have been aware of the Complainant and its reputation in the VELFAC Mark at the time the Respondent registered the Domain Name. The website at the Domain Name advertises products in direct competition with products offered by the Complainant and there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name identical to the coined VELFAC Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the VELFAC Mark.

The Domain Name has been used for a parking page with pay-per-click links for which the Respondent undoubtedly received some commercial gain. In these circumstances where the Respondent has offered no

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plausible explanation for the registration of the Domain Name, the Panel finds that the Respondent is using
the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with the VELFAC Mark as to the source, sponsorship, affiliation, or
endorsement of the Respondent’s website. As such the Panel finds that the Domain Name is being used in
bad faith pursuant to 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

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 Domain Name, <velfac.co> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: January 27, 2023