WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vlisco B.V. v. Perfect Privacy, LLC / Liberty & Justice

Case No. D2019-1020

1. The Parties

The Complainant is Vlisco B.V., Netherlands, represented by Hoyng Rokh Monegier LLP, Netherlands.

The Respondent is Perfect Privacy, LLC, United States of America / Liberty & Justice, United States of America.

2. The Domain Name and Registrar

The disputed domain name <vliscoandco.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2019. On May 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 6, 2019, 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 May 10, 2019.

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 May 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2019.

The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 11, 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.

4. Factual Background

The Complainant is a Dutch company founded in 1846, specialized in designing, producing and distributing fashion fabrics of the African wax print style.

The Complainant is the owner of several trademarks composed by the term “vlisco”, in particular the International Trademark n. 206290, registered on January 9, 1958.

“Vlisco” is also the main and distinctive element of the Complainant’s trade name.

The Complainant owns and operates other domain names incorporating its VLISCO mark, including <vlisco.com> registered on January 6, 1997.

The disputed domain name was registered by the Respondent on October 1, 2018.

The Panel accessed the disputed domain name on June 23, 2019, at which time the disputed domain name did not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. VLISCO is world-famous for its authentic Dutch wax fabrics and exclusive bold, colorful an ethnic inspired fabrics and fashion designs, which it has been creating, producing, promoting and selling for over 170 years. The disputed domain name is identical to, or at least confusingly similar to, trademarks in which the Complainant has rights. The VLISCO trademarks are wholly and identically incorporated in the disputed domain name as its dominant part. In creating the disputed domain name, the Respondent has merely added the non-distinctive and/or descriptive elements “and” and “co”. The disputed domain name can be read to mean “Vlisco and Company”. Moreover, the disputed domain name corresponds to “Vlisco&co”, a well-known Vlisco-branded project initiated by the Complainant in 2017.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Respondent has indicated that Liberty & Justice has no interest in owning the disputed domain name, it does not dispute any of the VLISCO trademarks and has no intention or desire to fight this complaint. Also, the Complainant has not licensed or otherwise permitted the Respondent to use and of the VLISCO trademarks. The disputed domain name redirects the user to a website containing paid links links to third party websites that infringe on the VLISCO trademarks, including “www.africanfabs.com”, on which counterfeit VLISCO fabrics were offered for sale. Thus, the Respondent makes illegitimate commercial and unfair use of the disputed domain name for commercial gain to misleadingly divert Internet users.

(iii) The disputed domain name was registered and is being used in bad faith. The Respondent had constructive, and potentially actual, notice of the Complainant’s prior rights in the VLISCO trademarks when it registered the disputed domain name. The disputed domain name has no meaning in English or in any other language, other than to refer to the VLISCO trademarks, and the Vlisco&co project. The Respondent has used the disputed domain name to direct Internet users to infringing third party websites via paid links and therefore creating a likelihood of confusion with the Complainant’s trademarks and products as to the source or affiliation. The Complainant summoned the original Respondent to remove the access to the infringing website and received no answer. After obtaining the Respondent’s contact information from the Center, the Complainant approached the Respondent and tried to come to an amicable solution, but the Respondent did not timely answer.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel has no doubt that “vlisco” is a term directly connected with the Complainant.

Annex IV to the Complaint shows registrations of the VLISCO trademark owned by the Complainant, including an International Trademark (n. 206290, registered on January 9, 1958) and a trademark in the United States of America (n. 73079308, registered on August 21, 1979).

The term “vlisco” is wholly encompassed within the disputed domain name, which also includes the suffix “andco”, a popular acronym form “and Company” in English.

Previous UDRP panels have consistently found that descriptive additions (such as the acronym “andco”) do not avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; etc.).

It is also well established that the addition of a generic Top-Level Domain (“gTLD”) suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.

As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:

(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

Considering the prior use alleged by the Complainant, the fact that currently there is no active webpage linked to the disputed domain name, and no response was provided to the present Complaint, the Panel finds that there is no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Furthermore, in informal communications with the Complainant by email, the Respondent admitted that it has no interest in owning the disputed domain name, does not dispute any of the VLISCO trademarks and has no intention or desire to fight this complaint.

Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark 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

(iii) 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 its website or location or of a product or service on its website or location.

The disputed domain name encompasses the distinctive term “vlisco” together with the suffix “andco” and the gTLD “.com”.

When the disputed domain name was registered by the Respondent (in 2018) the VLISCO trademark was already directly connected with the Complainant’s fashion fabrics for more than a century. The addition of the term “andco” even enhances the perception that the disputed domain name relates to the Complainant.

The term “vlisco” has no dictionary meaning in English.

Therefore, the Panel concludes that it is unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the disputed domain name <vliscoandco.com> was a mere coincidence. The Complainant has also indicated that the disputed domain name used to be linked to a website with third party links.

Currently no active website linked to the disputed domain name, this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith.

In the Panel’s view, the circumstances that the Respondent (a) adopted a centennial and distinctive trademark to compose the disputed domain name; (b) is not currently not using the disputed domain name; and (c) has not provided any justification for the registration of such third party trademark, even after receiving a cease and desist letter from the Complainant, certainly cannot be used in benefit of the Respondent in the present case. Such circumstances, associated with (d) the lack of any plausible interpretation for the legitimate adoption of the term <vliscoandco.com> by the Respondent are enough in this Panel’s view to characterize bad faith registration and use in the present case.

Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 disputed domain name <vliscoandco.com> be transferred to the Complainant.

Rodrigo Azevedo
Sole Panelist
Date: June 25, 2019