Avery Dennison Corporation v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1104001385350
Complainant is Avery Dennison Corporation (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Hutz, California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freeaverysignkit.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/ba/ PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 21, 2011; the National Arbitration Forum received payment April 22, 2011.
On April 24, 2011, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <freeaverysignkit.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 26, 2011, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@freeaverysignkit.com. Also on May 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <freeaverysignkit.com>, is confusingly similar to Complainant’s AVERY mark.
2. Respondent has no rights to or legitimate interests in the <freeaverysignkit.com> domain name.
3. Respondent registered and used the <freeaverysignkit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Avery Dennison Corporation, is a large company selling labeling products, office supplies, and business support products. Complainant owns multiple trademark registrations for the AVERY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 758,123 issued October 8, 1963).
Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, registered the disputed domain name August 18, 2006. The disputed domain name resolves to a site offering links to Complainant’s competitors in the office supply business.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the AVERY mark by registering that mark with the USPTO. Complainant provided evidence to support this claim; and, in therefore, the Panel finds that Complainant registered the mark with the USPTO, which is sufficient to show rights pursuant to the Policy. (e.g., Reg. No. 758,123 issued October 8, 1963) creating defendable rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant also contends that Respondent’s <freeaverysignkit.com> domain name is confusingly similar to its own AVERY mark. Respondent’s disputed domain name includes the entire mark while adding the generic terms “free” and “kit” along with a term that describes Complainant’s business, “sign.” The disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The Panel finds that such additions to the AVERY mark in the domain name do not differentiate it from the disputed domain name. Therefore, the Panel also finds that the disputed domain name is confusingly similar to the AVERY mark under Policy ¶ 4(a)(i). See Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that the domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant does so, the burden of proof to show rights shifts to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent did not file a Response in this proceeding, which allows the Panel to find without further deliberation that Respondent lacks rights or legitimate interests in the mark. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, this Panel still examines the entire record before making a determination of Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “Private Registrations Aktien Gesellschaft / Domain Admin,” which this Panel finds is not nominally similar to the <freeaverysignkit.com> domain name. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to a Policy ¶ 4(c)(ii) analysis. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a site offering links to third-party websites, many of which are Complainant’s competitors. The Panel finds that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <freeaverysignkit.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s <freeaverysignkit.com> domain name disrupts its business, conduct that supports findings of bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to Complainant’s competitors. Internet users diverted to these linked sites may end up purchasing goods from one of Complainant’s competitors rather than Complainant. The Panel finds that this use does in fact disrupt Complainant’s business and is affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also alleges that Respondent is wrongfully receiving benefit commercially from the disputed domain name, circumstances that also support findings of bad faith registration and use. Respondent’s disputed domain name resolves to a site offering links to third-party websites. Many of these links resolve to the websites of Complainant’s competitors. It is very likely that Respondent collects click-through fees from the owners of the linked sites for each Internet user diverted through the link. The Panel finds that Respondent is using the confusingly similar domain name for its own commercial gain in a way that supports findings of bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeaverysignkit.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 14, 2011.
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