Avery Dennison Corporation v. Brian Wick a/k/a Defaultdata.com
Claim Number: FA0205000113288
Complainant is Avery Dennison Corporation, Brea, CA (“Complainant”) represented by Michael K. Bosworth, of 1400 Page Mill Road. Respondent is Brian Wick a/k/a Defaultdata.com, Denver, CO (“Respondent”), pro se.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <avery-dennison.com>, registered with Verisign – Network Solutions, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Rudolph J. Gerber as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 7, 2002; the Forum received a hard copy on May 10, 2002.
On May 10, 2002, Verisign – Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name above is registered with Verisign – Network Solutions, Inc. and that the Respondent is the current registrant of the domain name. Verisign – Network Solutions, Inc. has verified that Respondent is bound by the Verisign – Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response dated June 4, 2002 was received and determined to be complete on June 7, 2002.
On June 20, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the above Rudolph J. Gerber as Panelist.
Complainant requests that the domain name at issue be transferred from Respondent to Complainant; Respondent argues against such transfer and seeks dismissal.
Complainant alleges that the domain name in question is identical or confusingly similar to the trademark name in which Complainant has prior rights, that Respondent has no rights or legitimate interests in this domain name, that Respondent is not known by this domain name, is not making a legitimate or fair use of this domain name, and registered and is using this domain name in bad faith.
Complainant asserts that Respondent has no business connections with Complainant and has no consent to register Complainant’s mark as a domain name. Furthermore, Complainant asserts that Respondent is not incorporated or doing business as “Avery-Dennison” and therefore has no legitimate right or interest in such a domain name.
Complainant also asserts that Respondent’s choice of this domain name reflects an attempt on his part to divert customers of Avery Dennison by deceiving them.
Complainant also asserts that the Respondent has a pattern of conduct in registering domain names for the purpose of selling them to others for more than the cost of acquisition. Complainant lists a series of eight similar cases dealing with Respondent’s use of related domain names similar to registered names of major American businesses. Complainant also asserts that Respondent owns some 3,666 domain names, with 2,290 of them merely incorporating a hyphen as the sole difference. Complainant concludes by asserting that such behavior on the part of Respondent shows a pattern of bad faith.
Respondent denies the allegations above and asserts a rightful use of the domain name in question by citing from his numerous lawsuits and other Internet activities in which he has been involved as a result of similar use of other trade names.
He also asserts repeatedly that Internet trade name restrictions violate the United States Constitution and in particular his right to free speech.
Respondent admits having reserved “hundreds” of Internet addresses similar to the trade names of large, well-known American companies and firms. He asserts on page 10 of his Response that one of his intentions has been “to mess with big business.”
Nonetheless, while admitting that the domain name in question is identical or confusingly similar to Complainant’s business name, Respondent nonetheless asserts a lack of bad faith based on his stated subjective good intentions to exercise, among other things, his constitutional right to free speech.
For the reasons given below, the domain name <avery-dennison.com> is ordered transferred to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect to the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name in question is identical with Complainant’s business name, dating from at least 1990. The domain name in question is identical except for the hyphen. Mere use of a hyphen is insufficient to avoid the conclusion of rendering the domain name identical. On page 16 of his Response, Respondent admits that he does not dispute the fact that the domain name in question is identical and/or confusingly similar to Complainant’s trade name.
Accordingly, based on the facts as well as on Respondent’s admission, Complainant has established this element.
Rights or Legitimate Interests
Complainant has registered and used the trade name in question from at least 1990. It is the official name of its business and is so identified in the general public without, however, the use of a hyphen. Respondent has no identity with Complainant’s business, nor with any business purporting to be described by this same name and is not commonly known by the domain name. Respondent makes no legitimate noncommercial or fair use of this name.
Given the fact that Complainant has registered and used the Avery Dennison trade name to identify its legitimate business enterprises from at least 1990, coupled with the fact that Respondent is not using the domain name for any bona fide offering of goods and services, and that the sole difference between the two versions of the name in question consists of a hyphen, it appears that Respondent has no rights or legitimate interests in the use of the domain name <avery-dennison.com.>.
Complainant has established this element.
Registration and Use in Bad Faith
Bad faith registration and usage is amply demonstrated by Respondent’s own Response admitting substantial legal and Internet involvement on his part in improper use of many other well-recognized and registered proprietary names, including but not limited to Morrison & Foerster, Morrison Hecker.com, Ralph Lauren, and many others, notably those listed at the bottom of page 6 of the Complaint, which indicates transfer of at least ten of his claimed domain names following litigation.
Furthermore, bad faith registration on the part of a Respondent can be inferred from using a mere hyphen as a device to obtain a domain name identical to claimant’s service mark, See America Networks Inc. v. Tariq Masood and Solo Signs, WIPO D2000-0131. See also CBS Broadcasting Inc. v. LA-Twilight-Zone, WIPO D2000-0397 (finding bad faith by a respondent in using a recognized trade name for no business purposes but only as a means of harassing and possibly defrauding the complainant).
Bad faith use is also independently established through Respondent’s own legally unfounded assertions about his Internet activities and his desire to “mess with” large businesses.
Claimant has amply established this element.
Based on the foregoing Respondent’s use of the domain name in question is cancelled and the name <avery-dennison.com> is ordered transferred to Complainant.
Hon. Rudolph J. Gerber
Dated: July 29, 2002
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