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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> VKR Holding A/S v Bains [2009] DRS 6973 (24 April 2009) URL: http://www.bailii.org/uk/cases/DRS/2009/6973.html Cite as: [2009] DRS 6973 |
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Complainant: VKR Holding A/S
Country: Denmark
Respondent: Sardara Bains
Country: GB
veluxblind.co.uk
The Complaint entered the Nominet system on March 10, 2009, was validated on March 11, 2009 and transmitted to the Respondent that day. The Response was filed on March 18, 2009 and transmitted to the Complainant that day. A Reply was filed on March 24, 2009. Informal mediation not having resolved the dispute and the Complainant having paid the relevant fee on April 8, 2009, the matter was referred to me for decision on April 16, 2009. I confirmed that I am independent of the parties and am not aware of any matters that might call into question my impartiality or independence.
The Complainant manufactures and supplies roof windows and blinds under the trademark VELUX, which it has registered in numerous countries, including in the UK since 1950 (Registered No. A691115). It operates several websites via domain names incorporating its VELUX trademark, including www.veluxblinds.co.uk and www.veluxblindsdirect.co.uk, both registered in 2000.
The Domain Name was registered by the Respondent on May 18, 2007. For some months in that year the Domain Name led to a website with the following headlines on its home page:
"VELUX BLIND: Welcome to the www.VELUXBlind.co.uk
VELUX is one of the leading roof window manufacturers. We offer all Velux Blinds."
The home page depicted various VELUX blinds. At the foot of the home page appeared a box entitled "Manufacturer" whereby the products of manufacturers other than the Complainant could be accessed.
The Complainant's initial letters addressed to the Respondent seeking transfer of the Domain Name (November 7 and 22, 2007) contained the paragraph:
"We appreciate that you are a dealer of VELUX products, however as a general rule and as laid down in our Conditions of Sale, we do not allow third parties to acquire intellectual property rights incorporating our trademark".
In a further letter from the Complainant dated November 13, 2008, by which time the Domain Name no longer led to the aforesaid website, that paragraph was replaced by the following:
"As a general rule, we do not allow third parties to acquire intellectual property rights incorporating our trademark. Further more, the domain name is used for web-portal activities, such activities constituting illegal commercial use of our trademark."
That letter prompted "Without Prejudice" correspondence from the Respondent, commencing with a letter dated November 26, 2008, in which the Respondent offered to transfer the Domain Name to the Complainant for £500.
Since December, 2008 the website address has led and still leads to a web page displaying an "Error Message" and "sponsored" links to sites offering products that compete with those of the Complainant, with no reference to the Complainant's products.
Complainant
The Complainant says that through both registration and extensive use, it has established rights in the VELUX name in England. The distinctive element of the Domain Name is the VELUX trademark. The generic suffix "blind" does not detract from nor sufficiently distinguish the Domain Name from the Complainant's mark.
The Complainant says the Domain Name was registered or otherwise acquired in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights and that the Respondent continues to use the Domain Name in a manner which takes unfair advantage of the Complainant's rights.
The Domain Name was registered without the Complainant's knowledge or permission and was carefully chosen to take the most effective advantage of the well-known VELUX brand. The Respondent's primary purpose in registering the Domain Name was to target actual and potential VELUX customers in an effort unfairly to draw them away from www.veluxblindsdirect.co.uk and other official VELUX sites to its own benefit and the Complainant's commercial detriment. This conduct was calculated to promote the Respondent's business by increasing the traffic to the Respondent's site by unfairly exploiting the Complainant's rights in the VELUX trademark.
The Complaint relies on the "Without Prejudice" communications from the Respondent to submit that the Domain Name was registered by the Respondent primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name.
Respondent
The Respondent says the Complainant has no rights to the Domain Name since its trademark is VELUX and it does not trade as VELUX BLIND. Others have traded without objection from the Complainant for the last 8 years under such names as Velux Blinds (www.veluxblinds.net), Velux Centre (www.veluxcentre.co.uk), Velux Installations (www.veluxinstallations.co.uk) and Velux Solutions (www.veluxsolutions.co.uk). This suggests the Complainant has by default accepted "VELUX" as generic and descriptive of other businesses.
The Complainant did not register a complaint whilst the Respondent was running a legitimate business as a distributor of Velux products in 2007 but waited for the business to stop trading and then a further 15 months before making this complaint.
The Respondent denies abusive registration, saying inter alia that:
- VELUX is generic and descriptive;
- the Domain Name was registered for the legitimate business of exclusive distribution of Velux products (i.e. supporting, not damaging, the Complainant's business);
- the Respondent's online business stopped at the end of 2007 and the Domain Name has been dormant and parked since then so cannot have disrupted the Complainant's business;
- the Domain Name does not even appear on Google search;
- the Respondent has never sought to sell the Domain Name to the Complainant and never contacted the Complainant prior to the Complaint;
- the Complainant has not provided any evidence to prove that the Respondent has been unfairly disrupting its business;
- since the Domain Name has been parked there is no mention of any VELUX products on the website;
- the advertisements are shown by the hosting company;
- the Complainant does not seem to have taken any action over other domain names incorporating VELUX used by other businesses; and
- the letter from the Complainant dated November 13, 2008 acknowledged that the Domain Name was used by the Respondent as a dealer for Velux products.
Complainant's Reply
In its Reply, the Complainant says inter alia that VELUX is distinctive and that the Respondent has no right to use VELUX BLIND as a business or trade name as this would incorporate the registered VELUX trademark; the Respondent's business, while it operated, offered competing products as well as VELUX products.
The Complainant denies that it has accepted other businesses' use of the trademark. Since the Response was filed, the Complainant has entered into Domain Name User Authorization Agreements with the registrants of the veluxblinds.net, veluxcentre.com, veluxcentre.co.uk and veluxinstallations.co.uk domain names, whom it describes as "loyal dealers" of VELUX products, and is expecting to proceed through Nominet against the registrant of veluxsolutions.co.uk.
The Complainant became aware of the registration in September 2007 and sent its first letter to the Respondent seeking transfer on November 7, 2007, i.e. before the website was used as a portal. This letter was returned as undeliverable because the correct information did not appear in the WHOIS. Any delay is attributable to this. The Complainant ascertained the correct information from Nominet. After further fruitless correspondence in December 2008, the Complainant filed the complaint.
The Domain Name is not dormant and parked but is used to advertise competitor products. This is disruptive of the Complainant's business even though the Domain Name does not appear in a GOOGLE search.
Referring to the "Without Prejudice" communications, the Complainant says that before the complaint was submitted on March 10, 2009, the Complainant was contacted by the Respondent on November 26, 2008 offering to transfer the Domain Name at £500, a valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring the Domain Name.
The Complainant denies that its letter of November 13, 2008 acknowledged that the Domain Name is used by a dealer of VELUX products.
Paragraph 2 of the Policy requires the Complainant to prove, on the balance of probabilities, that:
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
According to paragraph 1 of the Policy,
"Abusive Registration means a Domain Name which either:
i. was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; or
ii. has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the Complainant's Rights."
Paragraphs 3 and 4 of the Policy provide non-exhaustive lists of factors which may be evidence that the Domain Name is or is not an Abusive Registration.
Rights
The Complainant has established that it has rights in the U.K. registered trademark VELUX. I am satisfied that this is a coined and distinctive name. Its use by the other parties to whom the Respondent has referred (dubbed by the Complainant "loyal dealers") has been use in relation to the Complainant's products. There is no basis for a finding that VELUX has become generic or is descriptive.
The Domain Name consists of the Complainant's distinctive trademark and the descriptive word "blind", which does nothing to distinguish the Domain Name from the mark, since the mark is associated in the public mind with the Complainant's blinds. Accordingly, the Complainant has established that it has Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive registration
For a period of some months after the Domain Name was registered, it was used by the Respondent for a website offering the Complainant's products and also to provide links to products of the Complainant's competitors. There is no evidence to support the Respondent's claim that it distributed exclusively the Complainant's products.
I am entitled to take the "Without Prejudice" correspondence into account pursuant to paragraph 6 (a) of the Policy. In that correspondence, on November 26, 2008 the Respondent offered to transfer the Domain Name to the Complainant for £500. Although this sum is very likely to have exceeded the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name, the timing of this approach and the operation of the website following registration are inconsistent with the Domain Name having been registered in May 2007 primarily for the purpose of selling it to the Complainant.
Rather, it appears the Respondent's intent in registering the disputed domain name was to attract to the Respondent's website potential customers seeking the Complainant's products, where the Respondent could offer them both the Complainant's products and the opportunity to acquire competing products.
The intent to use the Complainant's mark to offer competing products on the website satisfies me that the Respondent registered the Domain Name primarily for the purpose of unfairly disrupting the business of the Complainant. On this evidence I find, pursuant to paragraph 3(a)(i)C of the Policy, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
It is unnecessary to determine whether the current use of the Domain Name affords a separate ground for a finding of Abusive Registration.
I find that the Complainant has proved that it has Rights in a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration. I therefore direct that the Domain Name be transferred to the Complainant.
Signed: Alan Limbury Dated: April 24, 2009