Veko Lightsystems International B.V. was awarded the domain name Veko.com by a one member UDRP panel
The Complainant won the case based off of a Benelux trademark issued February 20, 2002.
A Benelux trademark is about the easiest trademarks to get an usually a jurisdiction someone runs to if they have a weak claim for the trademark especially if they need one in a hurry.
The panel put a lot of weight in its decision on the fact that the domain went to a page of was offered for sale on domainnamesales.com for $25,000 on, the owner of the domain was a domainer and owned over 1,450 domain names and “has a prior history in registering domain names corresponding to the trademarks of others.”
Here are the relevant facts and findings by the one member panel:
“The first question that arises is whether Complainant has a trademark or service mark on which it can rely
“Complainant contends that it is the owner of the VEKO mark, which is used for the following goods and services: switching systems for lighting, lighting, lighting systems, lighting installations, and installation and repair in relation to lighting. ”
“Complainant argues that it is the owner of trademark registrations with the BOIP for the VEKO mark (e.g., Reg. No. 0703059, registered February 20, 2002).
“Complainant also owns trademark registrations with the OHIM for the VEKO mark (Reg. No. 010913655, registered October 10, 2012). “
The Panel notes that although Respondent appears to reside in Korea, Policy ¶ 4(a)(i) and UDRP precedent do not require that Complainant registers its mark in the country in which Respondent resides. ”
Thus, the Panel concludes that Complainant’s registration of the VEKO mark with the BOIP and OHIM sufficiently demonstrates its rights in the mark pursuant to Policy ¶ 4(a)(i)
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
Respondent has chosen to take Complainant’s VEKO trademark and to use it in its domain name, without making any alteration to its spelling, thus giving the false impression that it is an official domain name of Complainant that will lead to an official website of Complainant; to resolve to a website promoting lighting and other goods and services, advertised it for sale and offered it to Complainant for sale for $25,000;
Complainant contends that the disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.”
“”VEKO.com may be available for purchase!,” and “Why build a brand when you can buy one?”
Respondent has also offered to sell the disputed domain name to Complainant for an excessive amount of $25,000.”
Thus, the Panel determines that Respondent’s offer to sell the disputed domain on its resolving webpage is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy
First, Complainant argues that Respondent’s attempt to sell the disputed domain name to the generic public and to Complainant for $25,000 is evidence of bad faith registration and use. Complainant contends that Respondent’s disputed domain name resolves to a website stating, “THIS PREMIUM DOMAIN NAME MAY BE LISTED FOR SALE, CLICK HERE TO INQUIRE.”
Complainant argues that by clicking on the available hyperlink, one is directed to the URL <http://domainnamesales.com/domain/VEKO.com>, on which website it is stated, “VEKO.com may be available for purchase!,” and “Why build a brand when you can buy one?”
As the Panel finds that Respondent primarily intended to offer the disputed domain name for sale when it registered the disputed domain name, it also finds that Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant claims that Respondent owns 1,450 domain names in addition to the domain name in dispute.
Complainant asserts that Respondent has a prior history in registering domain names corresponding to the trademarks of others.
Thus, the Panel determines that Respondent’s prior UDRP proceedings resulting in findings of bad faith and transfer evidences Respondent’s bad faith use and registration of the domain name under Policy ¶ 4(b)(ii).
Thirdly, Complainant asserts that if Respondent had performed a simple search of the BOIP database, before registering the disputed domain name, it would have disclosed the existence of the VEKO trademark registration of October 31, 1997.
Although UDRP case precedent declines to find bad faith as a result of constructive knowledge, as shown by The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”), the Panel finds on the totality of the evidence that on the balance of probabilities, Respondent had actual knowledge of Complainant’s trademark at the time it registered the disputed domain name, giving rise to registration of the domain name in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the VEKO mark and in view of the conduct that Respondent engaged in when using it, including linking it to a website promoting lighting products, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.