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Velcro USA Inc., Velcro Industries B. V. v. Domain Master, Kentech, Inc./ Titan Net
Case No. D2006-0653
1. The Parties
The Complainants are Velcro Industries B. V., a Netherlands limited liability company having its principal place of business at Curacao, Netherland Antilles, and Velcro USA Inc., a Delaware corporation having its principal place of business in New Hampshire, United States of America. (Collectively referred to as the “Complainant”).
The Respondent is Domain Master, Kentech, Inc./ Titan Net, Rift Valley, Kenya.
(Collectively referred to as the “Respondent”).
2. The Domain Names and Registrars
The disputed domain names: <velcrocableties.org>, <velcrostraps.org>,
<velcrowatchbands.org> are registered with Domain Contender, LLC and <velcrousa.org>
is registered with Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2006. On May 26, 2006, the Center transmitted by email to Domain Contender, LLC and Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue as registered with those registrars respectively. On May 26, 2006, Domain Contender, LLC and Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center their respective verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 31, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2006.
The Center appointed Nasser A. Khasawneh as the sole
panelist in this matter on July 14, 2006. 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 Velcro Industries B. V (VIBV) is the owner of various trademark registrations of the word Mark VELCRO. Copies of trademark registration certificates in the United States were submitted by the Complainant and show 13 registrations most of which are in the name of VIBV, and some of which are in the name of the other Complainant, Velcro USA Inc. (VUSA) and Velcro S.A (Swiss corporation). This latter registration dates back to 1958 and is the first registration made. A trademark registration certificate presented in this case indicates that first use was in 1956.
The aforementioned registrations cover various classes and a range of goods which include loop-type fasteners, snap-hooks, snap fasteners, cord locks, and other goods.
A trademark list was presented in the case which shows two registrations of the trademark VELCRO in Kenya in the name of the Complainant VIBV dated 1999 but no copies of trademark registrations were submitted.
The Complainant VUSA has a domain name registration <velcro.com> registered in 1994. The Complainant submitted a list of domain names owned by VUSA which include the trademark VELCRO. The Panel verified on WHOIS the ownership of some of the presented domain names. The verified domain name registrations showed the Complainant VUSA as the registrant. The Complainants use the aforementioned domain names in connection with the business of offering hook and loop fasteners and fastening systems.
The trademark VELCRO is recognized as a trademark in dictionaries. The various definitions submitted in this case define Velcro as trademark used for products such as fastening tapes, or fastener for clothes, etc.
The Respondent registered the disputed domain names
in January and February of 2006.
5. Parties’ Contentions
The Complainant contends that:
- It is the owner of the trademark VELCRO and has numerous trademark registrations, domain names and common law trademark rights in the trademark VELCRO. The trademark is used in connection with offering of hook and loop products and fastening systems. Significant time, money and effort have been spent in developing and promoting the VELCRO trademark and the business related thereto. The extensive use, investment, promotion and the quality of the products resulted in rendering the VELCRO trademark well-known. The trademark VELCRO also became recognized in dictionaries. The trademark VELCRO is arbitrary and fanciful and, as a result of being such, it should obtain even greater protection.
- The disputed domain names are identical and/or confusingly similar to the Complainants’ trademark because (a) they include the trademark of the Complainant together with certain additions that are not enough to distinguish the disputed domain names from the trademark of the Complainants; (b) the domain name <velcrousa.org> includes the name of the Complainant VUSA. The other disputed domain names include words that are related to the business of the Complainants.
- The Respondent has no rights in the disputed domain names because (a) the Complainants have exclusive rights to use the trademark VELCRO in domain names as it has registered it as a trademark and in a domain name; (b) the Respondent registered the disputed domain names 47 years after the use and registration of the trademark by the Complainants, (c) the registration of the disputed domain names bars the Complainants from using the domains and thus impose a restriction that is not rightful and tarnishes the trademarks of the Complainants, (d) it is the Respondent’s responsibility to prove its legitimate rights or interests since the domains are identical or confusingly similar to the mark of the Complainants and the latter have not authorized the use of the trademark by the Respondent, (e) Respondent is unable to show that use of the domain names is in connection with a bona fide offering of goods or services, (f) Respondent is not known by the disputed domain names, (g) Respondent is not making legitimate, non-commercial use of the domains since it is using them for redirecting Internet surfers.
- The Respondent registered and is using the disputed domain names in bad faith because of the following reasons: (a) Complainant has the exclusive right to use the trademark VELCRO as domain name, (b) disputed domain names are identical or confusingly similar to the trademark exclusively owned by the Complainants, (c) the disputed domain names create the impression that they are sponsored, affiliated or in other ways linked to the Complainants, (d) Respondent had legal notice of the trademark of the Complainant, (e) the Respondent expressly acknowledged when signing the registration agreements with the domain name Registrar not to be infringing third party rights and it should be thus considered as having constructive knowledge of the Complainants’ trademarks, (f) Respondent is cyber-squatting by offering the disputed domain names for sale in addition to other domain names incorporating famous marks, (g) it is difficult to imagine that the Respondent has chosen the disputed domain names independently since the trademark VELCRO is arbitrary and fanciful and the Respondent has used it with words that are relevant to the field of business of the Complainant, (h) customers of the Complainants are prevented from reaching it because of the disputed domain names, (i) use of the disputed domain names makes customers believe they are endorsed or affiliated to the Complainant, (j) the Respondent has not responded to the communication sent by the Complainant/s in this matter and has provided inaccurate contact details.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
A. Identical or Confusingly Similar
It is established from the facts and documents presented in this case that the Complainant is the owner of the trademark VELCRO and has registered and used it as a trademark and in domain names.
The Panel noted that the Respondent uses the trademark VELCRO in all of the disputed domain names; there is no disputing the fact that the Respondent is using the identical trademark of the Complainants in the disputed domain names.
The Respondent has added words to the trademark for each domain name but these
words are in no way distinctive. Terms such as “cableties”, “straps”,
“watchbands” are generic and the Complainant/s manufactures products
that can be used in connection with the aforementioned items. See
Nintendo of America, Inc. v Gray West International, WIPO
Case No. D2000-1219 (respondent’s addition of “games”
to its domain name does nothing to reduce its confusing similarity with Nintendo’s
POKEMON® marks), Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto
Rico, WIPO Case No. D2000-0477.
(The addition of a common or generic term following a trademark does not
create a new or different mark in which respondent has rights).
Adding the word “usa” is in fact the name of the Complainant VUSA and is likely to lead the consumer to believe that the concerned website is owned by the Complainant.
Therefore, it is evident that the use of the trademark VELCRO together with the other words confuses the consumer and leads him or her to think that these websites are owned by the trademark owner, the Complainant.
Consequently, the Panel finds that the disputed domain is confusingly similar to the registered and used trademarks of the Complainant.
B. Rights or Legitimate Interests
The trademark VELCRO is owned by the Complainant as established by the facts of this case. The Respondent is not linked to the Complainant or its business in any manner nor acts on its behalf. The Complainant contends that it had not given any authorization to the Respondent to use the trademark VELCRO as part of the disputed domain names.
In accordance with Paragraph 4(c) of the Policy, the Respondent can demonstrate its rights or legitimate interests in the disputed domain names by proving one of the following elements:
i) that the Respondent used or presented demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;
ii) that the Respondent has been commonly known by the domain name;
iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of the Complainant.
The Respondent did not submit any evidence that establishes
its rights or legitimate interests based on any of the above scenarios. While
failure to respond does not present conclusive evidence against the Respondent,
the Panel does consider this factor as of the Respondent’s failure to
demonstrate its rights or legitimate interests in the disputed domain names
and has accordingly drawn certain inferences from information provided in the
Complaint. See Sociйtй Air France v. Domain Active Pty. Ltd., WIPO
Case No. D2004-0993 (A respondent is not obliged to participate
in a domain name dispute proceeding, but its failure to do so can lead to an
Administrative Panel accepting as true the assertions of a Complainant which
are not unreasonable and leaves the Respondent open to the legitimate inferences
which flow from the information provided by a Complainant).
When examining each of the above elements and the information provided in the Complaint, Panel found that there is no offering of any goods or services made by the Respondent in this case. The disputed domain names direct the user to websites that includes links to other websites. The websites of the Respondent includes links to websites for various fields including domain names, and a very wide range of topics such as travel, life style, number plates , etc. The Respondent has not submitted any proof demonstrating an intent or preparation to use the domain name in connection with a bona fide offering of goods and services. Its website serves as a search portal.
The Panel does not find any association between the Respondent’s name and the disputed domain names which may indicate that the Respondent has been commonly known by the domain names <velcrocableties.org>, <velcrostraps.org>, <velcrousa.org>, <velcrowatchbands.org>. In fact, the Panel noted that the Respondent’s e-mail address registered as Registrant E-mail with Domain Master is at the domain name <kenyatech.com>. The Panel verified the website “www.kenyatech.com”, which the Complainant had included in the documents submitted showing that the Respondent operates under that name, but the Panel came across a website which provides links to other sites. The Panel could not therefore conclude whether the Respondent is known under the name “kenyatech” as claimed by the Complainant. However, this does not affect the findings of the Panel.
The Panel also found that the Respondent cannot plausibly argue on the evidence before the Panel that the disputed domain names were or are being used for “legitimate non-commercial or fair use” purposes. In fact, the Respondent is using the disputed domain names to direct the public to websites which contains links to other websites. The Panel infers from this that the Respondent in all likelihood receives commercial gains from the display of these links, which show as sponsored links.
Based on all of the above factors, the Panel finds no rights or legitimate interests for the Respondent in the disputed domain names.
C. Registered and Used in Bad Faith
The facts submitted in this case convince the Panel that the registration and use of the disputed domain names by the Respondent is in bad faith.
Paragraph 4(b) of the Policy, which enumerates instances establishing bad faith registration and use, states inter alia that: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The trademarks of the Complainants were registered years before the registration of the disputed domain names by the Respondent and the use and registration of the trademarks by the Complainant started decades before that. The Respondent in all probability intended to benefit from the reputation of the trademark and divert Internet users to its website.
The disputed domain names link to websites that include links to other websites. The Panel verified what these links led to and found out that they led to websites of other companies or other websites which include further links. Products offered include, watches, cables, etc. When surfing the websites of the Respondent, one comes across a list of links, which are clearly defined as “sponsored links”. Accordingly, the Panel concludes that by providing such links, the Respondent obtains a financial return from the owners of such websites through visitors that were diverted from the Complainants’ Internet traffic.
The Panel also noted that the disputed domain name <velcrousa.org> includes
a tab “hook and loop” which shows a list of hook and loop related
links, some of which direct the user to the Complainant branded fasteners. This
confirms that the Respondent knew of the trademark of the Complainant and in
all likelihood intended to free ride on its marks and to benefit from its fame
in the field of hooks and loops, see Herbalife International Inc. v. Surinder
S. Farmaha, WIPO Case No. D2005-0765
(the registration of a domain name with the knowledge of the complainant’s
trademark registration amounts to bad faith). Adding to all of the above, the
Panel notes the Complainants’ statement that the Respondent did not react
to the letters sent, which is also indicative of bad faith.
For all of the above considerations, the Panel finds
that bad faith on the part of the Respondent in acquiring and using the disputed
domain names was established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <velcrocableties.org>, <velcrostraps.org>, <velcrousa.org>, and <velcrowatchbands.org> be transferred to the Complainant.
Nasser A. Khasawneh
Date: July 23, 2006