The Complainant is Velcro BVBA of Deinze, Belgium, represented by Sujata Chaudhri IP Attorneys, India.
The Respondent is Sudhir Soam, Velcro Engineering India Pvt. Ltd. of Meerut, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 26, 2018, 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 December 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2019.
The Center appointed Stefan Naumann as the sole panelist in this matter on February 4, 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, a Belgian company, is part of a group of companies that manufacture and sell hook and loop fasteners and fastening systems under the trademark VELCRO.
The Complainant’s comprehensive evidence shows that the Complainant and its affiliated companies in numerous countries (i) own numerous VELCRO trademarks that are currently registered, notably for products in classes 10, 17, 24 and 26, the earliest of which was first registered in 1958, (ii) market their products under the VELCRO trademarks, (iii) actively enforce their VELCRO trademarks in UDRP proceedings, (iv) use the term “Velcro” as part of their corporate name, (v) own various top level and country code top level domain names with the term “Velcro” the earliest of which were registered in 1994 () and 1996 (), and (vi) own VELCRO trademarks and do business in India, where the Respondent is domiciled and incorporated. The Complainant has filed a complaint against Respondent with the Indian Registrar of Companies seeking cancellation of Respondent’s corporate name Velcro Engineering India Pvt. Ltd.
The Respondent is Sudhir Soam, Velcro Engineering India Pvt. Ltd. The company Velcro Engineering India Pvt. Ltd. was incorporated on July 17, 2018. Mr. Sudhir Soam does not appear in the incorporation documents as officer, director or shareholder of the company. However, the Complainant sent a cease and desist letter to the Respondent Velcro Engineering India Pvt. Ltd.’s directors. The Respondent company did not reply to this letter nor to a reminder.
The Respondent registered the domain name on July 24, 2018, less than a week after incorporation. The Complainant’s evidence shows that on December 21, 2018, the disputed domain name led to a holding page with inactive links. The Panel verified that at the time of the present decision, the disputed domain name still leads to a holding page with inactive links. 5. Parties’ Contentions A. Complainant
In its complaint, the Complainant asserts that its VELCRO marks are well known, that Respondent has no permission from the Complainant to use the Complainant’s trademarks or apply for a domain name with the Complainant trademarks, that the Respondent necessarily knew of the Complainant’s trademark, and that it does not have a right or legitimate interest in respect of the disputed domain name in connection with a bona fide offer of goods and services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its claim, the Complainant must demonstrate that all three elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent must have no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name must have been registered and used in bad faith. A. Identical or Confusingly Similar
The Complainant has established trademark rights in the trademark VELCRO as described in the Factual Background in section 4 above.
The Complainant explains that the term “Velcro” is a coined word without discernable meaning in English or Hindi.
However, in Velcro Industries BV and Velcro USA Inc. v. /Andres Chavez,WIPO Case No. D2008-0864, and in Velcro Industries BV, Velcro USA Inc. v. Chung, Mitch,WIPO Case No. D2007-1263, the respondents argued respectively that “Velcro” is a generic term and that it is understood as a generic term by the public in Spain. The panels in those two cases carefully considered the argument and found (i) that “the UDRP Policy and Rules are not intended as a forum to decide the issue of distinctiveness of a trademark registrations … or loss of distinctiveness” (Velcro Industries BV, Velcro USA Inc. v. Chung, Mitch,WIPO Case No. D2007-1263), and (ii) that genericness may be relevant for the purposes of determining whether a domain name was registered and used in bad faith (Velcro Industries BV and Velcro USA Inc. v. /Andres Chavez,WIPO Case No. D2008-0864).
The Panel agrees with the views expressed in those two decisions and considers that for the purposes of deciding the present matter, the VELCRO trademarks are valid.
Established UDRP practice considers that the addition of a non-distinctive term and a Top-Level Domain (“TLD”) does not affect the comparison and determination of whether a domain name is identical or confusingly similar to a trademark. The Panel agrees with this principle.
The disputed domain name combines the term “Velcro” with the clearly non-distinctive term “engineering” and the TLD “.com”. The addition of a generic term and a TLD does not affect the fact the disputed domain name reproduces the Complainant’s VELCRO marks.
The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy. B. Rights or Legitimate Interests
The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name , and finds no indication in the evidence that the Respondent could have claimed rights or legitimate interests of its own in the term “Velcro”. Since the Respondent has no permission from the Complainant, its use of the disputed domain name is without rights or legitimate interests.
Additionally, the Panel notes that “proof of mere registration of the company, without more, is not enough to demonstrate that the Respondent was commonly known by the domain name” (The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim,WIPO Case No. D2016-2270, citing Royal Bank of Canada v. RBC Bank,WIPO Case No. D2002-0672).
The Panel considers that in the present case, the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Respondent’s use of a holding webpage with inactive links in these circumstances indicates that the Respondent registered and is using the disputed domain name in bad faith.
In this context, Respondent used the term “Velcro” as part of a corporate name for a company incorporated less than a week before the disputed domain name was registered. The Panel considers that Respondent’s use cannot support a contrary finding where Respondent to this day does not offer any products or services under the disputed domain name, is not known by the name “Velcro Engineering”, and chose not to respond to the Complainant’s letters. Furthermore, nothing in the comprehensive and thorough record submitted by the Complainant would support an argument that Respondent did not act in bad faith because the term “Velcro” may be or was perceived as a generic term by Respondent or by the public in India.
The Panel finds that in these circumstances the Complainant has established the third element under 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 be transferred to the Complainant.
Stefan Naumann
Sole Panelist
Date: February 15, 2019
Full & Egal Universal Law Academy