Avery Dennison Corporation v. Domain Admin / 007Names, Inc.
Claim Number: FA1110001411665
Complainant is Avery Dennison Corporation (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Gutz LLP, California, USA. Respondent is Domain Admin / 007Names, Inc. (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avery.biz>, registered with 007 Names, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2011; the National Arbitration Forum received payment on October 17, 2011.
On November 7, 2011, 007 Names, Inc. confirmed by e-mail to the National Arbitration Forum that the <avery.biz> domain name is registered with 007 Names, Inc. and that Respondent is the current registrant of the name. 007 Names, Inc. has verified that Respondent is bound by the 007 Names, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@avery.biz. Also on November 15, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 9, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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. Respondent’s <avery.biz> domain name is identical to Complainant’s AVERY mark.
2. Respondent does not have any rights or legitimate interests in the <avery.biz> domain name.
3. Respondent registered and used the <avery.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Avery Dennison Corporation, designs and markets labeling products, office supplies, and business support products under its AVERY mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its AVERY mark (Reg. No. 758,123 registered October 8, 1963).
Respondent, Domain Admin / 007Names, Inc., registered the <avery.biz> domain name on March 27, 2002. The disputed domain name resolves to a website that provides hyperlinks to websites selling competing products.
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."
In view of 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 draw such inferences it 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 that Complainant must 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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The first element of the Policy ¶ 4(a)(i) analysis is to determine if Complainant owns rights in the AVERY mark. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), and Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panels found that a national trademark registration is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Complainant provides a trademark registration with the USPTO for the AVERY mark (Reg. No. 758,123 registered October 8, 1963). Therefore, the Panel holds that Complainant established Policy ¶ 4(a)(i) rights in its AVERY mark.
The second element of Policy ¶ 4(a)(i) requires the Panel to analyze whether the <avery.biz> domain name is identical or confusingly similar to Complainant’s AVERY mark. In Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007), and Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007), the panels found a disputed domain name is identical to a complainant’s mark when the only change is the addition of a generic top-level domain (“gTLD”). In this case, Respondent’s <avery.biz> domain name contains Complainant’s entire AVERY mark and only adds the gTLD “.biz.” Thus, the Panel concludes that Respondent’s <avery.biz> domain name is identical to Complainant’s AVERY mark for the purposes of Policy ¶ 4(a)(i).
The Panel determines that both elements of Policy ¶ 4(a)(i) are satisfied.
Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests with respect to the disputed domain name. In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <avery.biz> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel found that a respondent’s failure to respond to a Complaint allows a panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Policy ¶ 4(c)(ii) instructs the Panel to analyze whether or not Respondent is commonly known by the <avery.biz> domain name. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panels focused on the WHOIS information and other evidence in the record when they concluded that the respective respondents were not commonly known by the disputed domain names. In the case at hand, the WHOIS information lists “Domain Admin / 007Names, Inc.” as the registrant of the <avery.biz> domain name. Moreover, Complainant contends that Respondent does not operate a business under the disputed domain name. Finally, Respondent did not respond to this case and did not present any evidence that it is commonly known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known by the <avery.biz> domain name under Policy ¶ 4(c)(ii).
Policy ¶¶ 4(c)(i) and (iii) requires the Panel to examine if Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panels found that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name when the respondent uses the disputed domain name to resolve to a parked website containing hyperlinks that resolve to websites selling competing products. Respondent’s <avery.biz> domain name resolves to a website that contains hyperlinks to third-party websites that sell competing labeling products, office supplies, and business support products. Based on this use, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <avery.biz> domain name.
As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.
Complainant presents no evidence or allegations under Policy ¶¶ 4(b)(i) and (ii).
A complainant may demonstrate a respondent’s bad faith registration and use under Policy ¶ 4(b)(iii) by providing evidence that a respondent’s registration and use disrupts the business of the complainant. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels determined that a respondent’s registration and use of a disputed domain name to provide a parked website containing hyperlinks that resolve to websites that sell competing products disrupts a complainant’s business. As noted, Respondent’s <avery.biz> domain name resolves to a website that hosts hyperlinks to third-party websites that sell competing products. The Panel presumes that Respondent’s actions disrupt Complainant’s business. Thus, the Panel finds Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use.
Policy ¶ 4(b)(iv) allows a complainant to exhibit a respondent’s bad faith registration and use by providing evidence that the respondent is attempting to commercially gain by creating confusion as to the complainant’s affiliation with the disputed domain name and resolving website. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panels found bad faith registration and use when a respondent’s disputed domain name resolves to a website containing hyperlinks to third-party websites selling competing products. The Panel presumes that Respondent commercially benefits from the aforementioned hyperlinks. Respondent hosts these hyperlinks on a website resolving from the confusingly similar <avery.biz> domain name. Consequently, the Panel concludes Respondent registered and uses the <avery.biz> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the AVERY mark. Although not a specific provision of Policy ¶ 4(b), prior panels in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), have found that, while constructive notice does not suffice for a finding of bad faith registration and use, evidence of a respondent’s actual notice of a complainant’s trademark rights supports a finding of bad faith registration. Based on Respondent’s registration of the confusingly similar <avery.biz> domain name and Respondent’s competing use of the disputed domain name, the Panel concludes Respondent had actual knowledge of Complainant’s rights in the AVERY mark. Thus, the Panel again finds Respondent engaged in bad faith registration under Policy ¶ 4(a)(iii).
The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under 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 <avery.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 23, 2011
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