Genericide and Velcro

November 6, 2007 · Print This Article

The World Intellectual Property Organization (WIPO) has just released the Velcro Industries B.V., Velcro USA Inc. v. Chung, Mitch decision (the “Velcro” decision). In the case, the administrative panel decided that the domain must be transferred to Velcro Industries.

The Arguments Made

The main argument that the respondent made was that the admittedly trademarked term “Velcro” has fallen into such common use as to become a generic term (a process known popularly as genericide). As the term was a generic one, he was permitted to register the domain. In particular, the responded argued: “‘velcro’ is a name of specific product, a commonly used term, as well as a trademark.”

The Decision

The WIPO panel quickly dismissed the respondent’s arguments. It found that the domain is identical or confusingly similar to the velcro trademark. OK, that’s a bit of a no-brainer. The panel then went on to find that there had been no genericide. It found that:

How to Avoid Genericide

(i) the complainants have been using the trademark since at least 1958 and always indicated that velcro is a registered trademark;

(ii) the complainants used the word velcro in association with nouns such as “touch fasteners” (that is, used the generic name for the product with the trademark);

(iii) most major dictionaries state that “velcro” is a trademark; and

(iv) the complainants aggressively enforce their trademark rights in the term “velcro.”

The panel then found that the respondent had no rights or legitimate interests in respect of the domain name, as the domain was used as a parking page with no plans to develop the website.

WIPO Doesn’t Understand Parking Pages

Although the decision in this case is correct, the comments by the panel in regards to parking pages and the lack of plans to develop are somewhat disconcerting. Many domainers are buying domains with no plans to develop and simply putting up parking pages. Just as someone who purchases an empty plot of land with no plans to develop it should not lose their land for that reason, domainers with no plans to develop should not lose their domains either.

Here is how the parking page looked today:

Bad Faith

The panel then went on to find that had been registered and was being used in bad faith. I think what really hurt the respondent here is that he worked for a company that made products that seemed to compete with the complainants. As well, there were links on the parking page to competitors of the complainant.

Lessons for Domainers

This last point really bears emphasis: domainers should be very careful about the parking pages on their domains. There have been numerous cases where domainers have lost valuable generic domains simply because of some of the ads on their parking pages. Be careful about what shows up on your parking page! The law really should be different – why should a person lose a generic domain rather than simply being required not to show specific ads? However, that’s the law as it stands today.

Analysis of the Velcro Case

All in all, I think that this is a correct decision. It is clear that “velcro” is a trademark and that the complainants have been aggressive in preserving its status as a trademark. Some companies in the past have lost their trademarks due to genericide. However, companies nowadays (for instance, Google) are very aware of the risks of genericide and are quite aggressive in ensuring that this does not happen.

However, the decision is perhaps not as strong as it may sound. The respondent was unrepresented by counsel so it is unlikely he did a particularly good job at preparing his case. In particular, the panel noted that “While Respondent made allegations about alleged invalidity in the Response, Respondent did not submit evidence supporting the allegation of lack of or loss of distinctiveness of the VELCRO trademark.” With no evidence before the panel to support the respondent’s position of genericide, it really should come as no surprise that the respondent lost.

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