WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Velcro BVBA v. Naresh Velaga, Micro Green Technologies Pvt. Ltd.

Case No. D2019-1387

1. The Parties

The Complainant is Velcro BVBA, Belgium, represented by Sujata Chaudhri IP Attorneys, India.

The Respondent is Naresh Velaga, Micro Green Technologies Pvt. Ltd., India.

2. The Domain Name and Registrar

The disputed domain name <velcrotechno.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2019. On June 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 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 June 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2019. The Center received email communications from the Respondent on June 22, 2019 and June 26, 2019.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 19, 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 limited company with its principal office in Belgium. The Complainant's founder invented the hook and loop fastener in the 1940s and coined the term “velcro” for this innovation, derived from the French words “velours” and “crochet”, meaning “velvet” and “hook” respectively. The Complainant’s predecessors adopted the VELCRO trademark in 1952 and the Complainant now manufactures and sells a variety of goods under such mark, from fasteners with multiple applications to sanding discs. The Complainant’s business is substantial, featuring around 2,500 employees, claiming worldwide revenues of USD 398,409,377 in 2018 and having a presence in more than 40 countries, including India where the Respondent is based.

The Complainant has had an Internet presence at “www.velcro.com” since around 1994, spends considerable sums on advertising its VELCRO marks online and in print media, and is the recipient of multiple awards for its corporate activities. The Complainant supports its presence in various countries by way of corresponding domain names. In respect of India, the Complainant is the registrant of <velcro.co.in>, registered in 2009, and <velcro.in>, registered in 2013. The Complainant has engaged in extensive print media campaigns in India, including notices to the Indian public of its rights, which have appeared in India’s largest circulating national daily newspaper.

The Complainant is the owner of a wide variety of VELCRO trademarks in various territories worldwide, including Indian registered trademark No. 184852 for a device mark containing a stylized depiction of the word VELCRO, featuring a hook effect between the letters “l” and “c”, in international class 24 with application date of April 30, 1958, and Indian registered trademark No. 1114518 for the word mark VELCRO in international class 24 with application date of June 27, 2002.

In 2017, the Complainant engaged in arbitrations under the .in Domain Name Dispute Resolution Policy (“INDRP”) in respect of the domain names <velcrotechnologies.in> and <velcrotech.in>, both registered by an entity apparently named “Velcro Technologies”. The Complainant was successful in each of these cases, with awards of transfer being made by the appointed arbitrators on January 17, 2017, and March 3, 2017, respectively. Said arbitrators found that the domain names concerned were identical and/or confusingly similar to the Complainant’s VELCRO marks, that the registrant had no rights or legitimate interests therein, and had registered and used such domain names in bad faith. In each case, the appointed arbitrator found that the registrant was, or was connected with, a company named “Velcro Technologies Private Limited”. In the case relating to <velcrotechnologies.in>, the arbitrator found that the registrant had “engaged in a planned campaign to methodically misappropriate the Complainant’s VELCRO marks and the Complainant’s trade names”.

On February 27, 2017, the Complainant filed a complaint with the Indian Registrar of Companies against the registration of the corporate name “Velcro Technologies Private Limited” by the apparent respondent in the said domain name arbitrations. On October 30, 2017, the competent authority found that the trade and general public would be bound to believe that the Complainant and said company were associated or affiliated with each other in business, when they were not, and therefore ordered “Velcro Technologies Private Limited” to change its corporate name within a period of six months.

The disputed domain name was created on August 4, 2018. Although the registrant of the disputed domain name is “Naresh Velaga, Micro Green Technologies Pvt. Ltd.”, there is a clear link between this entity and the previously described “Velcro Technologies Private Limited”. In the first place, the website associated with the disputed domain name is titled “VELCRO Technologies Pvt Ltd”. Secondly, when the Respondent in the present case communicated with the Center, it indicated that it was in the course of changing its name and produced a “Certificate of Incorporation pursuant to change of name” which related to “Velcro Technologies Private Limited”. This certificate also confirms that the entity concerned bears an identical corporate identification number to that listed as being the true respondent in the IDNRP case relating to <velcrotechnologies.in>. Finally, the Respondent’s said communications were signed “Manager. / Naresh, V.”, thus linking these to the present Respondent as found in the WhoIs record for the disputed domain name.

Little is known about the Respondent itself other than the information provided above and the fact that the Complainant’s screenshot of the website at the disputed domain name features a section headed “ABOUT VELCRO TECHNOLOGIES” which states “Velcro is a leading provider of open, scalable, next generation commerce technology solutions for Tier 1 retail”. Said website also describes various e-commerce services offered by named third party providers, from hosting and payment fraud detection to localization and translation.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

The Complainant describes the organization of its company, its history dating from the 1940s and its adoption of the VELCRO trademark in 1952 derived from the French words “velours” and “crochet”, meaning “velvet” and “hook” respectively. The Complainant states that it has used such mark to designate its goods and services, including hook and loop fasteners and sanding discs, in numerous ways including at its website “www.velcro.com”, on social media sites, in promotional materials, and in the name of its affiliated companies worldwide. The Complainant demonstrates significant worldwide revenues and advertising spend in relation to its VELCRO mark and describes various awards which it has received between 2013 and 2018.

The Complainant claims significant ties with India, where the Respondent is based, dating back to 1958, including the fact that sales in 2018 reached INR 38,098,204 and engages in substantial advertising in well-known publications in India and provides examples. The Complainant produces considerable evidence of media coverage relative to its VELCRO mark and contends that this is well-known in India. The Complainant also provides examples of its enforcement efforts including notices to the Indian public of its rights.

The Complainant notes that its history with “Velcro Technologies Private Limited” dates back to 2016 and originally relates to the domain names <velcrotechnologies.in> and <velcrotech.in> as described in the factual background section above. The Complainant acknowledges that this entity is not the registrant of the disputed domain name but contends that there is a link between the Respondent and “Velcro Technologies Private Limited” due to the fact that the latter is listed on the associated website and that the same contact email address has been provided to the Indian Registrar of Companies by both entities.

The Complainant notes that the disputed domain name contains the Complainant’s distinctive VELCRO mark in its entirety and that such mark is the dominant element. The Complainant adds that the inclusion of the additional word “techno” is insufficient to distinguish the disputed domain name from said mark.

The Complainant submits that as a coined word, its VELCRO mark has no discernable meaning, neither in the English language, nor in Hindi, which it notes is India’s national language, nor in any Indian vernacular language. The Complainant adds that the Respondent has offered no explanation for its adoption of such mark in the disputed domain name and that, in the absence of such, the only reasonable inference is that it adopted the VELCRO mark in bad faith and without rights or legitimate interests. The Complainant notes that its mark predates the registration of the disputed domain name by decades and states that it has not authorized the Respondent to use its said mark nor to register the disputed domain name, adding that the Respondent is not a licensee of such mark. The Complainant states that its mark is famous in India and that its previous domain name and company name complaints against “Velcro Technologies Private Limited” constitute sufficient notice of its rights. The Complainant adds that the Respondent cannot show that it was commonly known by the disputed domain name prior to or as of the date of registration of the disputed domain name.

The Complainant submits that the Respondent’s registration of the disputed domain name is a clear case of cybersquatting and that the Respondent’s intention is to take advantage of the Complainant’s substantial reputation and prominent Internet presence in order to divert business and unduly gain in all aspects to the Complainant’s detriment. The Complainant asserts that the disputed domain name was registered as a response to the Respondent losing the domain names <velcrotechnologies.in> and <velcrotech.in> in the related cases under the INDRP and that the Respondent has used a different registrant name to conceal the fact that it is the same entity. The Complainant states that this constitutes a violation of the orders of competent authorities together with registration and use in bad faith in terms of the Policy.

The Complainant focuses on its long and well-established reputation and states that it is more than a coincidence that the Respondent has sought to capitalize on confusion with its VELCRO mark, submitting that the registration of a domain name which incorporates a well-known mark by an entity having no relationship to the mark owner concerned is in itself evidence of bad faith. The Complainant contends that the Respondent’s use of the disputed domain name is bound to lead to confusion and deception in the public’s mind due to the VELCRO mark’s high reputation. Finally, the Complainant concludes that the Respondent’s failure to reply to a cease and desist letter can also be a considered a factor in finding bad faith registration and use under the Policy.

B. Respondent

The Respondent did not file a formal Response and did not directly respond to the Complainant’s contentions. However, in an email communication to the Center dated June 22, 2019, the Respondent stated that it had initiated a process for “Name & Domain change” and would complete this as soon as possible. The Respondent requested an extension of time of two weeks to conclude such process.

In a second email dated June 26, 2019, the Respondent stated that it had received approval from the Indian Ministry of Corporate Affairs for a name change to the Respondent company. Such email was accompanied by an attachment containing a “Certificate of Incorporation pursuant to change of name” which stated that the company formerly named “Velcro Technologies Private Limited” had changed its name to “Vellcro Technologies Private Limited” with effect from June 26, 2019.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated 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

There are two parts to the inquiry under the first element of the Policy. First, the Complainant must demonstrate that it has UDRP-relevant rights in a trademark. Secondly, the Complainant must show that the disputed domain name is identical or confusingly similar to such trademark.

The Respondent has not challenged the Complainant’s submissions on this topic. The Panel finds that the Complainant has UDRP-relevant rights in its VELCRO trademark with reference to the multiple registered trademarks cited in the Complaint, two of which are noted in the factual background section above. Accordingly, the Panel turns to a comparison of such mark to the disputed domain name. Stylized or figurative elements of a mark may be disregarded for the purposes of the comparison exercise provided that, as in the case of the Complainant’s earlier mark, any word elements are capable of separation from any graphical elements. In comparing the word element of each of the Complainant’s cited marks to the disputed domain name, it may be seen that the disputed domain name consists of the Complainant’s VELCRO mark in its entirety as the first and most dominant element, coupled with the descriptive word “techno”, being a contraction of “technology”. It is well-established in Policy jurisprudence that the addition of descriptive terms, whether abbreviated or not, in addition to a trademark in a domain name does not prevent such domain name from being confusingly similar to such mark. In other words, a descriptive element such as the word “techno” does not remove the overall impression made on the public by the VELCRO trademark, being the dominant element of the disputed domain name.

In these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“[…] Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case. The Complainant asserts that it has neither licensed nor authorized the Respondent to use its VELCRO mark or to register the disputed domain name. The Complainant also submits that the Respondent was not commonly known by the disputed domain name as at the date of its creation and furthermore that by that date the Respondent was on notice of the Complainant’s rights due to its involvement in the cases brought by the Complainant under the INDRP.

Turning to the Respondent’s case, the Panel notes that there has been no formal Response. In the absence of such, the Panel notes that the Respondent appears to be connected with an entity previously named “Velcro Technologies Private Limited”. The existence of a company name corresponding to the disputed domain name would not ordinarily confer rights or legitimate interests upon the Respondent by itself (see for example the discussion and cited cases in Velcro BVBA v. Sudhir Soam, Velcro Engineering India Pvt. Ltd., WIPO Case No. D2018-2937). In any event, the Respondent appears to have conceded this point due to the change of name of that entity.

The Respondent has published a partially completed website which demonstrates that it is engaged in business unrelated to that of the Complainant. This might have indicated that the Respondent was making demonstrable preparations to use, or was using, the disputed domain name in connection with a bona fide offering of goods and services. However, as in the recent case of Velcro BVBA v. Monali Mohanty, Velcroelectricals, WIPO Case No. D2018-0635, where the facts were broadly similar to those of the present case, and as also found by the arbitrators in the INDRP cases noted in the factual background section above, there is nothing on the present record indicating that the Respondent selected the disputed domain name for any reason other than to refer to the Complainant and its products and, presumably, to seek to benefit by association with the Complainant’s business and its well-known trademark, in which the record shows that considerable goodwill is vested. On no view could such an offering of goods and services be considered bona fide in the meaning of paragraph 4(c)(i) of the Policy.

The Respondent has chosen not to provide any explanation for its registration and use of the disputed domain name and has therefore not put forward any submissions or evidence which would tend to show any rights or legitimate interests therein. On the contrary, the terms of the Respondent’s communication noted above suggest that it is undergoing a “Name & Domain change”. This suggests that the Respondent concedes that it does not possess any rights or legitimate interests in the disputed domain name.

In all of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the 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, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

In the present case, the Complainant’s assertions focus principally on paragraph 4(b)(iv) of the Policy. The general thrust of the Complaint is that the Complainant’s VELCRO mark is of a longstanding nature and extremely well-known, and that the Respondent seeks to benefit unfairly from confusing the public into believing that there is a commercial association between the Complainant and the Respondent’s technology business. The Complainant also indicates that the Respondent is a repeat offender in this regard, due to the fact that it is linked to the registrant of the <velcrotechnologies.in> and <velcrotech.in> domain names and therefore to the corresponding findings of registration and use in bad faith under the INDRP.

The Panel is satisfied that the Respondent had prior knowledge of the Complainant’s mark when registering the disputed domain name, given that it was involved in or closely connected to the said INDRP cases. There appears to be a clear intention on the part of the Respondent to target such mark to its own commercial benefit. The Panel accepts the Complainant’s contention that the disputed domain name is likely to have been created in order to allow the Respondent to continue to operate its business contrary to the general tenor of the findings in the INDRP cases. The Respondent has largely conceded this point by its acknowledgement that it requires to undergo a “Name & Domain change”. The Respondent also appears to have used a different company name on the WhoIs record for the disputed domain name, in an apparent smokescreen intended to conceal its relationship with the registrant of <velcrotechnologies.in> and <velcrotech.in>. This can hardly be seen as an indicator of registration and use in good faith. The link between the Respondent and “Velcro Technologies Private Limited” has nevertheless been clearly established, however inadvertently, by the Respondent’s own correspondence with the Center.

The Panel acknowledges that, at least as the partially complete website associated with the disputed domain name stands, the Respondent purports to be in a different line of business from the Complainant. This does not however allow the Respondent to avoid the thrust of the Policy where it has adopted a well-known mark such as the Complainant’s VELCRO mark in the disputed domain name. As the panel put it in Velcro BVBA v. Monali Mohanty, Velcroelectricals, supra: “[…] Nevertheless, it seems clear that the Respondent selected and used the company name and accompanying Domain Name because ‘Velcro’ was well-known and the Respondent was not. In short, the Respondent was exploiting the reputation of another, for commercial gain, and that amounts to an abuse of trademark as contemplated by the Policy. […] The trademark owner can legitimately seek to control when and how the mark is used, and by whom. Using the trademark of another for a domain name, therefore, must be reckoned bad faith for Policy purposes, as the UDRP was designed to correct trademark abuses in the domain name system.”

The Respondent has failed to provide a formal Response in the present proceeding and accordingly has not put forward any evidence or submissions showing or tending to show that it registered and used the disputed domain name in good faith. In the absence of such, the indications on the present record all point away from a good faith motivation behind the creation and use of the disputed domain name.

In all of the above circumstances, the Panel finds on the balance of probabilities that the disputed domain name has been registered and is being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <velcrotechno.com> be transferred to the Complainant.

Andrew D. S. Lothian
Sole Panelist
Date: August 2, 2019