WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Velcro BVBA v. Phelim Blake
Case No. D2019-1615
1. The Parties
The Complainant is Velcro BVBA, Belgium, represented by Day Pitney LLP, United States of America.
The Respondent is Phelim Blake, Ireland.
2. The Domain Name and Registrar
The disputed domain name <velcrotape.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 July 9, 2019. On July 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2019, 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 July 11, 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 July 11, 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 July 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Adam Samuel as the sole panelist in this matter on August 13, 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 member of a Belgian group of companies that together manufacture hook-and-loop fasteners and other adhesive products including flooring tape. The Complainant’s group of companies promotes its products through the domain name, <velcro.com>, registered on November 2, 1994. The Complainant owns a number of trademarks for the name VELCRO in a variety of countries including a United States of America trademark, registration number 0661700, registered on May 13, 1958.
The Respondent registered the disputed domain name on April 16, 2019. This currently resolves to a page which presents various adhesive-related products including two which purport to be products of the Complainant’s group of companies.
5. Parties’ Contentions
The disputed domain name incorporates the Complainant’s famous and distinctive trademark in its entirety. The addition of the descriptive term “tape” within the disputed domain name does not distinguish the disputed domain name from the Complainant’s trademark and increases the likelihood of confusion by referring to a type of product manufactured and sold under that trademark. The generic Top-Level Domain (“gTLD”) “.com” does not identify a source of goods or services and does not distinguish the disputed domain name from the Complainant’s marks.
Given the Complainant’s group of companies’ longstanding, extensive and worldwide use of its VELCRO mark, there is no conceivable use of the term VELCRO by the Respondent other than to refer to the Complainant and its marks.
The Respondent has no bona fide rights in the disputed domain name and has never been commonly known by the disputed domain name. The Complainant has prior rights to its VELCRO marks which precede the Respondent’s registration by almost 60 years. The Respondent 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. It has never been commonly known by the disputed domain name, nor acquired any trademark or service mark rights in connection with the disputed domain name or made a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a website filled with what appear to be advertising links for various products in competition with and related to VELCRO brand tapes. The Respondent is presumably collecting a pay-per-click fee every time one of advertising links is clicked.
The Respondent registered the disputed domain name with the bad faith intention of profiting from the Complainant’s notoriety as a brand for adhesive straps and tapes. It registered the disputed domain name primarily to sell the domain name’s registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the disputed domain name. The disputed domain name has been advertised for sale at an inflated price of approximately USD 10,000 on GoDaddy.com, Sedo.com, NameCheap.com and Network Solutions.com. This inflated price is intended to target and profit from the Complainant’s exclusive trademark rights.
Knowing of the Complainant and its products, the Respondent registered and subsequently used the disputed domain name in bad faith to create confusion and attract Internet users seeking the Complainant and its products to the Respondent’s website. Once users arrive at the Respondent’s website, the Respondent profits from the confusion to earn payment for each link click on its website.
The Respondent’s decision to withhold any viable contact information from the WhoIs record, in tandem with other bad faith factors, should be considered to be evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name consists of the Complainant’s trademark, the word “tape” which corresponds to various product lines manufactured by the Complainant’s group of companies and the gTLD “.com”. The gTLD is irrelevant here because it does not affect the meaning of the disputed domain name and is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of the word “tape” does not affect the confusing similarity between the disputed domain name and the Complainant’s distinctive and well-known trademark. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Velcro” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. Based on the available record, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademark is a distinctive made-up word. Within a short time of registering the disputed domain name, the Respondent put the disputed domain name up for sale on a number of different websites at a price which far exceeds the Respondent’s out-of-pocket expenses directly related to the disputed domain name. This suggests that the Respondent registered the disputed 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”. That is evidence of registration and use in bad faith: paragraph 4(b)(i) of the Policy.
For these reasons alone the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith. It is unnecessary in the circumstances to deal with the other matters raised by the Complaint.
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 <velcrotape.com> be transferred to the Complainant.
Date: August 21, 2019