Complainant is Velcro BVBA of Deinze, Belgium, represented by Day Pitney LLP, United States of America ("United States").
Respondent is Steven Jiang of Beijing, China. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on April 21, 2016. On April 26, 2016, Complainant filed an Amended Complaint requesting for the addition of the disputed domain name to the Complaint.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2016. On April 27 and May 4, 2016, the Center received informal email communications from a third party. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on May 12, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 28, 2016. 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.
On June 3, 2016, the Panel issued a Panel Order notifying Respondent of the Amended Complaint and allowing him to respond thereto and extending the decision due date to June 15, 2016. 4. Factual Background
Complainant is a global organization domiciled in Belgium that is active, e.g., in the hook and loop fastener industry. Complainant has provided evidence that it owns, together with its worldwide subsidiaries, numerous registered United States trademarks relating to the VELCRO brand, including the following, all of which predate the registration of the disputed domain names:
- Word Mark VELCRO, United States Patent and Trademark Office (USPTO), Registration No. 1,027,417, Registration Date: December 16, 1975, status: active;
- Word mark VELCRO, United States Patent and Trademark Office (USPTO), Registration No. 1,031,355, Registration Date: January 27, 1976, status: active;
- Word mark VELCRO, United States Patent and Trademark Office (USPTO), Registration No. 1,598,591, Registration Date: May 29, 1990, status: active;
- Word mark VELCRO, United States Patent and Trademark Office (USPTO), Registration No. 2,220,407, Registration Date: January 26, 1999, status: active.
The disputed domain names were all created between June 17, 2015 and November 11, 2015. By the time of rendering this decision, they either resolve to active third parties' websites or are inactive, e.g.:
- : resolves to "www." showing the website of a company Shenzhen Sun Nice Textile Co., Ltd. that offers adhesive products as well as hook and loop fasteners named "Velcro";
- : does not resolve to a working website;
- : resolves to "www." showing the website of a company Dongguan Nahoo Textile Co., Ltd. that offers adhesive products as well as hook and loop fasteners named "Velcro" (website having the same layout as the website under );
- : no website content available ("Updating now, will be back soon.");
- : resolves to "www." showing the website of a company N&C Hook&Loop Co.,Ltd. that offers adhesive products as well as hook and loop fasteners named "Velcro" (website having the same layout as the website under ).
The Written Notice which was sent on April 21, 2016 via DHL to Respondent's address provided for in the disputed domain names' WhoIs information could not be delivered because of wrong/incomplete address details.
Complainant requests that the disputed domain names be transferred to Complainant. 5. Parties' Contentions A. Complainant
Complainant asserts to be the innovator and premier manufacturer of hook and loop fasteners traded under the VELCRO brand already for almost sixty years. The VELCRO group of companies owns over 400 active patents covering the proprietary VELCRO branded technology which is also subject to over 200 trademark registrations in over 150 countries worldwide and has meanwhile achieved worldwide consumer recognition.
Complainant contends that the disputed domain names are confusingly similar to Complainant's VELCRO trademark as they all incorporate the VELCRO trademark in its entirety.
Also, Complainant argues that Respondent has no rights or legitimate interests with respect to the disputed domain names since (1) Complainant has no relationship with Respondent and has not given Respondent permission or authorization to use Complainant's VELCRO trademark in any way, (2) Respondent does not own himself any trademark rights encompassing the disputed domain names, all of which were registered by Respondent long after the VELCRO trademarks' registrations, and (3) Respondent neither uses the disputed domain names for a bona fide offering of goods or services nor in a legitimate noncommercial way, but rather to sell and profit from third-party' competing goods.
Finally, Complainant states that Respondent registered and is using the disputed domain names in bad faith since (1) three out of the five disputed domain names redirect to websites that sell falsely labelled third-party' competing goods, (2) consequently, there is no way other but to find that the passive holding of two further disputed domain names by the same Respondent need be considered to constitute bad faith, and (3) all of the disputed domain names were registered almost sixty years after Complainant started developing substantial goodwill and widespread recognition in relation to its VELCRO trademarks, which is why Respondent at least had constructive notice of Complainant's rights in VELCRO by the time of registering the disputed domain names. B. Respondent
Respondent did not submit any formal response to the Center which, however, received two emails on April 27, 2016 as well as on May 4, 2016 by a third-party with no apparent relations to Respondent questioning why a Complaint had been filed in relation to the disputed domain name . 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) That the disputed domain names have been registered and are being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Addition of a Domain Name
Complainant filed an Amended Complaint on April 26, 2016 (thus, after the commencement of proceeding on April 21, 2016) requesting for the addition of the disputed domain name to the Complaint. Said disputed domain name is also registered in the name of Respondent.
As the Rules do not explicitly provide for a Complaint to be amended after the commencement of proceeding, e.g., to include additional domain names, there is a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.8) that any request for addition of a domain name to a Complaint after the formal commencement of proceeding needs to be determined within the general powers of the Panel, which by the same time shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case (see Rules, paragraph 10(b)).
The disputed domain name reflects Complainant's VELCRO trademark as do the four other disputed domain names included in the original Complaint; moreover, it shows the very same WhoIs contact information. Against this background, the addition of the disputed domain name to the case at hand is both fair and practicable. In turn, and in order to treat Respondent as equally fair, a Panel Order was issued on June 3, 2016 notifying Respondent of the Amended Complaint and allowing him to respond thereto, which Respondent did not.
Having said so, the Panel now comes to the following Decision in relation to all five disputed domain names: A. Identical or Confusingly Similar
The Panel concludes that the disputed domain names , , , and are confusingly similar to the VELCRO trademark in which Complainant has shown to have rights.
All of the disputed domain names incorporate the VELCRO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview 2.0, paragraph 1.9), that the addition of a generic or descriptive term or geographic wording to a trademark in a domain name is normally insufficient in itself to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the mere addition of the generic and/or descriptive terms, e.g., "adhesive", "love" and "strip" is not at all capable to dispel the confusing similarity arising from the incorporation of Complainant's VELCRO trademark in the respective disputed domain names , and (especially given the fact that the terms "adhesive" as well as "strip" point directly to Complainant's core business). With respect to the elements "nahoo" as well as "1lh" in the disputed domain names and , it must be found that they show no such distinctive meaning that would override the possibility to clearly recognize the VELCRO trademark in the respective disputed domain names and that they, therefore, are as well not capable to avoid a finding of a confusing similarity.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that on the basis of Complainant's undisputed contentions, Respondent apparently has neither made use of the disputed domain names in connection with a bona fide offering of goods or services nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant's VELCRO trademark, neither as a domain name nor in any other way. Also, there is no reason to believe that Respondent's name somehow corresponds with any of the disputed domain names.
Complainant contends, and Respondent has not challenged this contention, that Respondent uses the disputed domain names , as well as to redirect to third-party websites offering VELCRO labelled products that are in direct competition with those of Complainant. Such making use of those disputed domain names obviously does not confer any rights thereto, as it neither qualifies as a bona fide offering of goods or services nor as a legitimate, noncommercial or fair use without intent for commercial gain.
Moreover, as far as the disputed domain names as well as are concerned, UDRP panels have recognized that in cases of so-called "passive holding", the mere registration of a domain name, even one that is comprised of a dictionary word or phrase, may not of itself confer rights or legitimate interests in the domain name (see WIPO Overview 2.0, paragraph 2.2).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests with respect to all of the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant's allegations as they were included in the Complaint and in the Amended Complaint duly notified to Respondent by the Center on April 21, 2016 as well as on June 3, 2016, respectively.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith.
As already set forth above under Section 6. B., Complainant contends, and Respondent has not challenged this contention, that Respondent uses the disputed domain names , as well as to redirect to third-party websites offering VELCRO labelled products that are in direct competition with those of Complainant. The Panel, therefore, has no difficulty in finding that Respondent so far intentionally attempted to attract, for commercial gain, Internet users to his own website(s), by creating a likelihood of confusion with Complainant's VELCRO trademark as to the source, sponsorship, affiliation or endorsement thereof. Such circumstances shall be evidence of the registration and making use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
With regard to the disputed domain names as well as , there is a consensus view among UDRP panelists that such passive holding does not prevent the finding of bad faith if an examination of all the circumstances of a case still indicates that Respondent is acting in bad faith; indicative circumstances may be that Complainant has a well-known trademark and that Respondent has not filed any Response to the Complaint or, as in this case, no substantive Response to Complainant's contentions (see WIPO Overview 2.0, paragraph 3.2). Since all of these circumstances are fulfilled in the case at hand and in the absence of any other reason as to why Respondent should rely on the disputed domain names as well as , the Panel also has no difficulty in finding that Respondent has registered and is using those disputed domain names in a manner which takes unjustified and unfair advantage of the VELCRO trademark's fame and, therefore, be considered as bad faith within the meaning of the Policy.
In this context, the Panel also takes into account that Respondent obviously provided false WhoIs information since the delivery of the Written Notice sent to Respondent via DHL on April 21, 2016 failed because of incorrect address details. This sheds further light on Respondent's behavior which supports the conclusion of a registration and use of all of the disputed domain names in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 names , , , as well as be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: June 13, 2016
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