WIPO Domain Name Decision D2019-0598 for velcropatch.org
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Velcro BVBA v. Willie N. Eskridge Case No. D2019-0598 1. The Parties
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. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
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. 4. Factual Background
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 A 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. 5. Parties’ Contentions A. Complainant
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 A 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. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
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 wit