The Complainant is Velcro BVBA of Deinze, Belgium, represented by Day Pitney LLP, United States of America (“United States”).
The Respondent is Willie N. Eskridge of Harahan, Louisiana, United States.
The disputed domain name <velcropatch.org> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2019. On March 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2019, 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 Center verified that the 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 March 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2019.
The Center appointed Richard Tan as the sole panelist in this matter on April 26, 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 is a manufacturer of hook-and-loop fasteners under the well-known VELCRO trademark.
The Complainant’s VELCRO trademark is the subject of over 300 trademark registrations in over 150 countries worldwide, including the United States where the Respondent resides, covering various types of fabric and textile fasteners, straps, adhesives, and patches (such as United States trademark Reg. No. 4,068,386, registered on December 6, 2011).
The Complainant’s trademarks have been continuously and extensively used in connection with the promotion of the Complainant’s goods and services since at least as early as 1956.
The disputed domain name was registered on November 27, 2017, and resolves to an active website that advertises various hook-and-loop fasteners, ties, and patches available for purchase on Amazon.com including some VELCRO brand materials but mainly third-party materials and products in direct competition with those manufactured and sold by the Complainant under the VELCRO trademark.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark in which it has registered trademark rights as well as common law rights by virtue of its long, extensive and widespread use since at least as early as 1956. The disputed domain name incorporates the Complainant’s famous and distinctive trademark in its entirety, with the addition only of the descriptive term “patch” which actually increases the likelihood of confusion by referring to a type of material or product manufactured and sold by the Complainant under the VELCRO trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It contends that the Respondent has no bona fide rights in the disputed domain name and that the Respondent (i) has not used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; (ii) has neither been commonly known by the disputed domain name, nor acquired any trademark or service mark rights in connection with the same; and (iii) has not made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers to its website. It further contends that the Respondent does not have any license, permission, or authorization from the Complainant to use the Complainant’s VELCRO marks.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent registered and used the disputed domain name in bad faith for the purpose of intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website and other online locations, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products advertised thereon. The disputed domain name was registered and is being used to link to Amazon.com product listings for third-party goods that are in direct competition with those manufactured and sold under the Complainant’s VELCRO marks.
Given the distinctiveness and fame of the VELCRO trademark, as well as the Respondent’s use of the disputed domain name for its website to advertise the VELCRO brand products as well as competing third-party products covering and/or incorporating the same types of materials for which the Complainant and the VELCRO trademark are known, the Respondent must have been aware of the Complainant’s marks when the Respondent registered and used the disputed domain name.
Further, the Complainant contends that the Respondent registered the disputed domain name by knowingly providing fake contact details. When the Complainant’s counsel called the phone number provided in the WhoIs search results, the Complainant’s counsel was not put in touch with the domain name registrant, but rather a voicemail message for another individual. When the Complainant’s counsel then made further searches, the searches did not reveal that the registrant actually existed. Upon making contact by phone with the registrant of a website, which website was, according to the WhoIs search, was affiliated with the Respondent’s website, the individual contacted indicated that he may be able to address the Complainant’s concerns if the counsel for the Complainant would send him an email detailing the reasons for infringement of the Complainant’s trademark rights. The Complainant’s counsel sent a letter demanding the website to which the disputed domain name resolved be deactivated and transferred to the Complainant. A few days after the letter was sent, the disputed domain name stopped resolving to the website and began redirecting traffic to another website. A further letter was sent but to no avail, as the Complainant became aware that the disputed domain name was once again being used to resolve to a website to advertise third-party products and materials in direct competition with those manufactured and sold by the Complainant under the VELCRO trademark.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, in order to succeed in this administrative proceeding, the Complainant has the burden of proving each of the following elements:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name is registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
On the evidence adduced by the Complainant, the Panel finds that the Complainant has rights in its VELCRO trademark for the following reasons.
It is well accepted that the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and also RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010‑1089. When a domain name incorporates a trademark in its entirety, it may also be regarded that there is sufficient similarity between the mark and the domain name to render it confusingly similar. See Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; and see also Velcro BVBA v. Steven Jiang, WIPO Case No. D2016-0714.
In this case, the disputed domain name incorporates the Complainant’s VELCRO mark in its entirety, with the addition only of the generic, descriptive term “patch” and the generic Top-Level-Domain (“gTLD”) “.org”.
It is also well established that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8, WIPO Overview 3.0.
As the main or dominant feature of the disputed domain name consists of the Complainant’s mark, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and that the mere addition of the general descriptive term “patch” is insufficient to prevent a finding of confusing similarity.
With regard to the gTLD “.org” of the disputed domain name, it is also well established that the gTLD is viewed as a standard registration requirement and as such should be disregarded.
The Panel accordingly finds that the disputed domain name is confusingly similar to marks in which the Complainant has rights, for the purpose of paragraph 4(a)(i) of the Policy.
While the overall burden of proof is on the complainant to establish a lack of rights or legitimate interests on the part of the respondent, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1, WIPO Overview 3.0. See also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Velcro BVBA v. Steven Jiang, WIPO Case No. D2016-0714.
The Respondent has not submitted a response to the Complainant’s contentions.
On the evidence, the Respondent’s website advertises not only the Complainant’s VELCRO brand products but competing third-party products covering and/or incorporating the same types of materials for which the Complainant and the VELCRO trademark are known. Panels have recognized that resellers, distributors, or service providers using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods and services, and thus may have a legitimate interest in such a domain name. However, to be considered a bona fide offering of goods and services, the respondent must use such a domain name to sell only the trademarked goods or services, and cannot sell those of the trademark owner’s competitors. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Accordingly, while the disputed domain name is used in part to advertise the sale of some VELCRO materials on Amazon.com, the Respondent is not engaged in a bona fide offering of goods or services because the Respondent’s website is being used primarily to advertise the sale of third‑party materials and products in direct competition with the Complainant’s products. Such use has been termed by previous panels as a “bait and switch” tactic that does not give rise to any legitimate use: Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774.
The Respondent has not used or made demonstrable preparations to use the disputed domain name or a name corresponding therewith in connection with a bona fide offering of goods or services. The advertisement for sale of competing goods, coupled with the unauthorized use of the Complainant’s marks in the confusingly similar disputed domain name, does not qualify as a bona fide offering of goods or services. See e.g., BISSELL Homecare, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Commercial Vacuum, WIPO Case No. D2018-0211.
Further, there is no evidence that the Respondent has been commonly known by the disputed domain name. The Respondent has also not acquired any trademark or service mark rights in connection with the disputed domain name. The Complainant has no relationship with the Respondent, and the Complainant has not given the Respondent permission or authorization to use the Complainant’s marks. In the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent. See Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.
Further, the Complainant used its VELCRO mark for almost 60 years before the Respondent registered the disputed domain name. The Respondent must have been aware of the Complainant’s mark by its deliberate choice of the disputed domain name bearing the Complainant’s well-known mark. That deliberate choice was likely designed to mislead Internet users into believing that the website was operated, endorsed by or affiliated with the Complainant and to unfairly trade on the reputation and goodwill of the Complainant in its products. Such illegitimate use cannot constitute a bona fide offering of goods or services. An infringing use of the Complainant’s trademark cannot give rise to a right or legitimate interest on the part of the Respondent. See The Chase Manhattan Corporation et al. v. John Whitely, WIPO Case No. D2000-0346.
It is clear to the Panel that based on all the facts and evidence adduced by the Complainant, the Respondent has not made a legitimate noncommercial or fair use of the Domain. On the contrary, the evidence points to the Respondent using the disputed domain name for commercial gain to misleadingly divert consumers to its website.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that paragraph 4(a)(ii) of the Policy has been satisfied.
Paragraph 4(a)(iii) of the Policy provides that a complainant must, in addition to the matters set out above, demonstrate that the relevant disputed domain name has been registered and is being used in bad faith.
UDRP paragraph 4(b) provides that bad faith may be evidenced by a number of circumstances including, but not limited to, the use of the domain name to intentionally attempt 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.
In this case, the Panel has already found that the disputed domain name is confusingly similar to the Complainant’s trademarks and that the Respondent has no rights or legitimate interests in the disputed domain name. Panels have found bad faith registration and use when, as in this case, a domain name incorporates a complainant’s mark with an additional descriptive term, or one that corresponds to the Complainant’s area of business activity (as by the use of the term “patch” which describes a part of the Complainant’s product). See Section 3.2.1, WIPO Overview 3.0; and e.g., Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi, WIPO Case No. D2017-0391.
Further, the disputed domain name was registered and is being used to link to Amazon.com product listings for third-party goods that are in direct competition with those manufactured and sold under the Complainant’s marks. There is also evidence that the Respondent earns fees as a participant in the Amazon Services LLC Associates Program by linking its website to the Amazon.com products listings. Prior panels have held that such registration and use of a domain that incorporates a complainant’s trademark to advertise and link to another commercial website to sell a complainant’s goods and/or the goods of a complainant’s competitors constitutes bad faith. See LEGO Juris A/S v. Whois Privacy Protection Service by VALUE- DOMAIN / Kazuhiko Seki, WIPO Case No. D2016-1080; BISSELL Homecare, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Commercial Vacuum, WIPO Case No. D2018-0211; Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Oody Kit, WIPO Case No. D2012-1297.
As noted above, given the fame of the VELCRO trademark, the Respondent must have deliberately chosen and used the confusingly similar disputed domain name primarily to ride upon and take unfair advantage of the Complainant’s reputation and goodwill in its marks by intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, this would constitute bad faith registration and use.
Further, there is evidence adduced by the Complainant as noted above, that the contact information provided by the Respondent was fake. Providing fake contact information when registering a domain name is also an indication of bad faith. See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
In all the circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) 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 name <velcropatch.org> be transferred to the Complainant.
Richard Tan
Sole Panelist
Date: May 10, 2019