Mitch Chung
is chief executive of hook and loop fastener company Samcro,
according to the ruling from the dispute resolution service of the
World Intellectual Property Organisation (WIPO). WIPO arbitrators
can transfer domain names to someone who shows that a domain name
similar to their trade mark has been registered and used in bad
faith by another who has no rights in that name.
Chung registered the name velcro.biz and defended his actions by
saying that the term 'velcro' had become generic, and that
therefore he should have the right to use it. That argument was
vigorously opposed by Velcro, which said that it had trade marks on
the name dating back to 1958.
"Respondent [Chung] submits that the word 'velcro' isn’t only a
trademark, it’s also a name of specific product containing hook and
loop fastener material, and such term has been generally used for
many websites and by people around the world," said WIPO's account
of Chung's evidence. "Respondent submits that Complainant Velcro
Industries B.V. registered the name of a product as their own
trademark and it should not be deemed that such activity allows
VIBV to monopolize the name."
"Respondent further states that among many companies around the
world that have produced loop and hook fasteners commonly known as
Velcro, Samcro is one of the product manufacturers producing loop
and hook fasteners since 1989 in Indonesia and 1972 in another
country. By being involved for over 35 years in producing loop and
hook fasteners, Samcro must have rights to use the name of the
product that the company has been manufacturing," it said.
The WIPO arbitrator said that it was not his role to mediate on
the exact point at which a trade mark becomes a generic name. "The
[dispute resolution rules] are not intended as a forum to decide
the issue of distinctiveness of trademark registrations," he said.
"Respondent did not submit evidence supporting the allegation of
lack of or loss of distinctiveness of the VELCRO trademark."
The arbitrator found that the page hosted at velcro.biz
contained sponsored links not only to Velcro products but to those
of Velcro competitors. "The use of the domain name in dispute to
divert Internet traffic to competitors of Complainant or Internet
Users interested in Popular Categories does not give rise to a
right or legitimate interest in the domain name in dispute," said
the ruling. "Attracting Internet users familiar with Complainants’
VELCRO trademarks to competitors sponsored websites is damaging to
Complainants business. The panel cannot conceive of a situation in
which Respondent could use the domain name in dispute in good
faith."
The WIPO dispute resolution process is a substitute for a court
hearing and can only transfer names if three criteria are met. The
name must be identical or confusingly similar to the other party's
trade or service mark; the owner must have no rights or legitimate
interests in it, and the address must have been registered and used
in bad faith
The WIPO arbitrator found that all these criteria had been
fulfilled and ordered that the name be transferred to Velcro.
