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.