Avery Dennison Corporation v. Avery County Chamber of Commerce
Claim Number: FA1110001411671
Complainant is Avery Dennison Corporation (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Hutz LLP, California, USA. Respondent is Avery County Chamber of Commerce (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avery.org>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Daniel B. Banks, Jr., 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 October 17, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <avery.org> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 October 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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.org. Also on October 25, 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.
A Response was received and determined to be deficient on November 18, 2011.
An Additional Submission was filed by the Complainant on November 23, 2011. An Additional Submission was filed by the Respondent on November 20, 2011.
On December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Until after the Complaint was transmitted, the registrant identified in "whois" documents and to whom Complainant's unanswered correspondence was addressed was identified as Stanley Pace, having an address at 4700 Nantucket Ct., Flower Mound, Texas, 75022, e-mail addresses; question@gmail.com; lorinpace@gmail.com, telephone number: (310) 929-7555 ("Respondent"). However, on the evening that the instant Complaint was transmitted to Mr. Pace and the Forum but before this Dispute was initiated by the Forum, Mr. Pace or his agent modified the "whois" data, changing the listed identity of the registrant. Therefore, for the purpose of satisfying ICANN requirements, Respondent is identified as "Avery County Chamber of Commerce", having an address of 4501 Tynecastle Highway, Avery County, NC 28604, e-mail address: info@averycounty.com; telephone number (828) 263-9195. Complainant believes the modification was made to give the appearance of legitimacy to the otherwise illegitimate and bad-faith registration and use (as discussed further, below). However, the "AVERY.ORG" domain name remains listed as "for sale" by the Respondent as of October 24, 2011, which demonstrates that it was registered for the sole purpose of offering it for sale, and thus in bad faith. If this late-modified "registrant name" were legitimate, Respondent or any representative of the Avery County Chamber of Commerce would have responded to Complainant's demand letter and subsequent reminder, notifying Complainant of the domain name's purported relationship to Avery County C.O.C. In light of the circumstances under which Respondent modified the "whois" and the lack of any communication from the Avery County Chamber of Commerce, Complainant disputes the notion that the domain name is registered in the name of Avery County Chamber of Commerce: it was not so registered at the time the Complaint was prepared and filed. Therefore, Complainant respectfully requests that the Panel consider Mr. Pace as the registrant/Respondent for the purpose of this dispute, with Avery County Chamber of Commerce as an additional Respondent. Multiple entities, including the "holder of [the] domain name against which a Complaint is initiated" and the beneficial owner may be named respondents in a UDRP Complaint. WWF - World Wide Fund for Nature v. Moniker Online Servs. LLC, D2006-0975 (WIPO, Nov. 1, 2006); Luger v. DomainDoorman LLC Privacy Serv., D2009-0560 (WIPO June 23, 2009); Deutsche Lufthansa AG v. Kudakwashe Musunga, D2009-1754 (WIPO Feb. 12, 2010). Complainant is unaware of any information regarding Respondent's legal representation at this time.
Complainant owns some 136 registered trademarks throughout the world for the trademark "Avery." Avery has established itself as a leader in the field of labeling products, office supply and business support products. Over 65 years ago, Avery's predecessor-in-interest created a distinctive line of adhesive products marketed under the AVERY trademark, and it proceeded to register AVERY as a trademark in several jurisdictions throughout the world. Complainant's AVERY products are sold worldwide, and Complainant and its AVERY-branded products are well known and highly regarded among consumers of labels, adhesive goods, paper and office products, and several industries including without limitation apparel and medicine. Complainant has spent considerable sums on advertising and promotion of the AVERY trademark in connection with Complainant's goods, and, among other things, its products are worldwide industry leaders in recognition and sales. The AVERY mark has become directly associated with Complainant's goods and have acquired secondary meaning to Complainant's customers. Over its many years of developing, marketing and delivering its goods, consumers have associated the quality of Complainant's goods with its AVERY marks, and Complainant has benefited from such association.
The Disputed Domain Name reserved by Respondent is identical to Complainant's mark "AVERY". Indeed, the only differences are the addition of the generic top-level domain identifier ".ORG". Moreover, the Disputed Domain Name is being used in connection with an Internet site where the Respondent offer links to third-party providers of labeling and office supplies in direct competition with Complainant, apparently profiting Respondent. Attached hereto as Exhibit "D" is a print-out of the web site located at the Disputed Domain Name. It is Complainant's understanding that "links pages" of the sort used by Respondent in connection with the Disputed Domain Name generate revenue to the Respondent based on "click-through's" by web site visitors from the web pages at the Disputed Domain Name to the third-party sites linked therefrom.
Respondent is taking advantage of the fact that an Internet user would expect to obtain information about Complainant's products, including its office and label products, using a domain name comprising the AVERY mark to divert Internet traffic to Respondent's commercial web site offering links to sources of directly-competitive goods. Respondent's use of AVERY in the Disputed Domain Name will erroneously lead consumers and Complainant’s customers to believe the Disputed Domain Name is associated with, endorsed by or otherwise sponsored by Complainant.
Moreover, given Complainant's existing, extensive and longstanding worldwide trademark rights in the AVERY mark, Respondent has no legitimate interest in the use of the Disputed Domain Name. Respondent is not an entity that is related to or licensed by Complainant or Complainant’s subsidiaries.
Finally, Respondent is not, and has never been, commonly known by the name
"AVERY" (nor the variant thereof in the Disputed Domain Name). Respondent has no connection with Complainant, and is not authorized to use Complainant's trademark as a trade name or otherwise in connection with its business. Where, as here, a registrant is not commonly known by its domain name, the registration is not fair use if the domain name incorporates a third-party trademark.
The registrant currently identified in the "whois" record is not the registrant of record at the time of filing the Complaint. Neither registrant/Respondent ever used the Disputed Domain Name for anything other than a remunerative link farm while offering the Disputed Domain Name for sale until the instant Complaint was filed, at which time the registration was transferred to Avery County Chamber of Commerce in a transparent effort to fend off the charge of bad faith registration. Regardless, in light of the fact that the Disputed Domain Name is still, as of October 24, 2011, being offered for sale by the "new" registrant/Respondent, it is clear that Respondents acquired the Disputed Domain Name in bad faith and is using it in bad faith by holding the Disputed Domain Name with a view either to using it in connection with a link farm that trades off Complainant's name and good will, as demonstrated in the Exhibits hereto which show link farm use promoting the sale of goods in the field of Complainant's business - but conspicuously not in Respondents' field of business - or for selling, renting or otherwise transferring the domain name AVERY.ORG to Complainant, who has developed a
substantial goodwill in the trademark AVERY in the United States and throughout the world. In either case, Respondents' registration and use is demonstrably in bad faith.
Respondent registered the Disputed Domain Name sometime in or after 1998, long after the dates of first use of Complainant's AVERY mark (1941) and after the date that the mark was first registered as a trademark (October 8, 1963). Therefore, Complainant's use and registration of the name "AVERY" far precedes Respondent's registration of the Disputed Domain Name.
On August 31, 2011, counsel for Complainant became aware of Respondent's infringing use and first sent a cease and desist letter to Respondent. A true and correct copy of the letter is attached at Exhibit "D". Respondent did not respond to the letter nor to a subsequent reminder transmitted on October 5, 2011. Respondent's web site at the Disputed Domain Name promotes third-party competitors and counterfeiters of Complainant under misleading headings such as "Avery Address Labels", "Avery Label", and the like, which provide links to the third parties' sites from the site at the Disputed Domain Name. On information and belief, Respondent profits from "page-views" generated by visitors seeking information about Avery's AVERY goods, and from "click-throughs" to the third-party sites by those visitors who assume that there is some association, affiliation or sponsorship between Avery and Respondent (and the third parties linked on Respondent's site), which is not the case.
In any event, given Complainant's extensive trademark rights in the AVERY mark, Respondent has no legitimate interest in the use of the Disputed Domain Name in commerce and is a classic trademark infringer. There is no evidence whatsoever that Respondent has ever used the name "AVERY" in connection with the bona fide offering of goods and/or services.
Use of the AVERY Mark in a domain name constitutes an improper use of the mark to attract Internet users for commercial gain by creating a likelihood of confusion, and thus constitutes bad faith.
As shown above, Respondent has made no attempt to create a legitimate interest in the domain name. Use of a domain name registration to attract for commercial gain Internet users to Respondent's web site by creating a likelihood of confusion, as the Respondent has done with the Disputed Domain Name in this case, constitutes bad faith under the UDRP. Further, Respondent cannot rely on lack of knowledge as a defense to its conduct; it knew or should have known that the registration of the Disputed Domain Name infringed on Complainant's rights and prevented Complainant from using its registered mark in a corresponding domain name. Moreover, in light of Respondent's activities at the web site associated with the Disputed Domain Name, including the choice of "keywords", link headings, and the nature of the goods linked to on the sites, the use of Complainant's widely-known mark, as described in paragraph 9, permits the inference that Respondent was aware of the AVERY mark prior to registering the Disputed Domain Name. This has been held as evidence of bad faith. Indeed, the Disputed Domain Name is so obviously connected with Complainant and its goods that its registration and/or use by someone with no connection with the Complainant suggests bad faith. Finally, Respondent's conduct in ignoring Complainant's repeated efforts to contact it and thus leaving Complainant no option but to initiate the instant proceeding at considerable expense also demonstrates bad faith; none of the repeated email messages transmitting Complainant's letters were returned to Complainant as undeliverable, thus it can be assumed that Respondent received all of the correspondence but chose to ignore Complainant's claims of rights in the AVERY mark. In light of the foregoing, Respondent's prevention of Complainant from reflecting Complainant's AVERY trademark in a corresponding domain name registration constitutes bad faith in satisfaction of UDRP requirements.
B. Respondent
The Response in this case was deficient in that it was not timely filed. However, due to the allegations of apparent misrepresentation being made by the Complainant and the confusion as to the real registrant of the disputed domain name, the Panel felt it necessary to consider the Response.
The Response is from "info@averycountychamber.com." In said Response, it is stated that "We purchased Avery.org for $500 on Oct. 10 from Mr. Stanley Pace to use it as a shorter URL for Avery County [e-mail]. The URL was pending registrar transfer for 5 days and did not show up on our account until Oct. 15. The URL was in our possession from that point forward, many days before the dispute was filed. Mr. Pace did not notify us that there were legal issues with this URL. We are certainly not interested in spending more on legal fees for this domain which is why we have simply prepared this brief explanation".
Respondent goes on to say that it has not received any demand letters from Complainant, only notice of this dispute. It says <avery.org> is not for sale but is for internal use only. it is not aware of any listing for sale but it is not authorized by them.
We have only owned this URL for 5 weeks or so but Avery County was founded in 1911 so our rights to use the term "Avery" precedes Complainant. Also, we are not deriving any revenue at this time from the URL, nor have we in the past. We aim to use the URL for webmail only. We are willing to provide assurance to Complainant that there will never be advertisements related to their business on <avery.org>.
C. Additional Submissions
Complainant:
This Brief is in reply to the untimely "Response" that was filed in the <avery.org> case on November 18, 2011. Complainant has followed up with investigation of the facts alleged in the Response and submits that it is entirely bogus and should be discarded.
1. Timing of Transfer was Suspicious
Registrant Stanley Pace "transferred" the domain name registration after the Complaint was filed and served on him (on a Friday) but before the hardcopy with payment of the fees reached the Forum (Monday), and thus was able to effect the fraudulent transfer before the case was formally opened by the Forum. If this was not clear enough, he set up the gaining account with "whois" information mimicking that of the Avery County (Carolinas) Chamber of Commerce's web site URL "averycounty.com".
2. Response was Unsigned and Has No Identifying Legitimating Credentials; Registrant's Purported E-mail Addresses Are Bogus
It should be noted that the Response was unsigned and had no identification of the sender by name, not did it show any credentials, title, or otherwise legitimating the filing as an official statement of the Avery County Chamber of Commerce. Moreover, the Response was not sent from <averycounty.com>; rather, it was sent from the domain name email address "info@averycountychamber.com" on November 17, 2011.
The "averycountychamber.com" domain name was created on November 17, 2011 by the respondent/fraudulent registrant. See attached WHOIS. Registrant set up the <averycountychamber.com> domain name as a pointer to the <averycounty.com> site, and the domain name's "whois" to mimic that of the "whois" for <averycounty.com> in order to deceive the Panel. However, the administrative contact information for the two is not identical, with the new domain name's contact email address being created for the express purpose of channeling responses so that they appear legitimately related to Avery County Chamber of Commerce, which is not the case.
The e-mail address identified in the "whois" for the Disputed Domain Name is non-functional. It is "info@averycounty.com" and messages sent thereto are bounced back as undeliverable. This is because, as is clear when one uses the "contact" button on the legitimate AveryCounty.com site, the Chamber's e-mail inbox is "chamber@averycounty.com". Complainant has verified this with Jean Scott, an information Associate of the Avery County Chamber of Commerce in Banner Elk, NC on Friday, November 18, 2011 in a telephone call.
Ms. Scott of the Avery County Chamber advised Complainant's counsel in the foregoing telephone call that the Chamber does not own <avery.org> nor does it own <averycountychamber.com>. Moreover, the Chamber has not paid $500 for a domain name in recent months, nor is anyone there aware of a Stanley Pace, the registrant/transferor of the domain name to whom Complainant's demand letters were sent and against whom the original Complaint in this dispute was filed.
In short, there is no legitimacy to any of the purported "facts" in the Response Brief that was untimely filed by the bogus registrant on the 17th, and its contents should be disregarded.
3. Respondent Set Up a Pointer Site at the Bogus "AverycountyChamber.com" site but the Disputed Domain Name Remains a Generic Links Page
As if to underscore the illegitimacy and half-baked nature of the claims in the Response, Complainant reviewed the legitimate <averycounty.com> site against the <averycountychamber.com> pointer site and the <avery.org> Disputed Domain Name's site, and found that while Respondent has set up a Potemkin pointer site to ostensibly legitimate its source email address "info@averycountychamber.com" and create the false impression that it is directing mail to the true Chamber of Commerce named in the "whois", it has modified the <avery.org> site to belatedly remove advertisements for competing goods with those of Complainant but has left the site as a generic links page. If this were indeed a domain name purchased for $500 by the Chamber of Commerce, as Respondent argues occurred, one would expect that at a minimum, the Chamber would have made the Disputed Domain Name a pointer to its site also. However, since this has not been done but the November 17 registration and implementation of <averycountychamber.com> as a pointer was accomplished in tandem with the late-filing of the Response Brief, there is no logical conclusion but that the Respondent is prevaricating about all of the facts in the case. Based on Complainant's interview of Avery County Chamber of Commerce personnel, this is an accurate conclusion.
The "new registrant" e-mail address ("info@averycounty.com") was non-functional as late as when the revised Complaint was served and remains so to date. It strains credulity that a legitimate quasi-government entity like a chamber of commerce would have paid $500 for a domain name but transact the transfer and use as the contact e-mail address a non-functioning address/contact. More likely, Mr. Pace rushed to find an alias that would provide a patina of legitimacy and used a made-up e-mail address to do so.
It also strains credulity that a legitimate business entity like a chamber of commerce would pay $500 for a domain name without the seller warranting and representing that the domain name was free and clear of encumbrances or third-party claims.
Lastly, it is difficult to believe that Avery County Chamber of Commerce, which has an existing, set-up web site at <averycounty.com> would (a) spend $500 on a domain name, ostensibly for a mirror site (if <averycountychamber.com> is to be taken as legitimate), and (b) weeks after the purchase, still have no mirror site set up at the Disputed Domain Name.
It is also notable that, even though the Response purports to originate from info@averycountychamber.com with a cc. to info@averycounty.com, the Avery County web site's general contact e-mail address is chamber@averycounty.com, not "info@".
Unlike the Respondent's brief, which has no signatory, no Declarations in support, and no oath of verity, Complainant submits that all of the foregoing facts have been verified by Ms. Jean Scott, Information Associate of the Avery County Chamber of Commerce, in a telephone with Complainant's counsel on November 18, 2011, and the undersigned attests to the truth of these representations as related by Ms. Scott to him on said date, under oath and penalty of perjury.
In addition to the above, Complainant submits a letter from the Susan Freeman, Executive Director of the Avery County Chamber of Commerce, in support of the Complainant. This letter disavows any knowledge of Stanley Pace; states that the Chamber did not purchase and does not own the disputed domain name; states that the Chamber did not pay $500 to acquire the name; states that the email address "info@averycountychamber.com does not direct correspondence to anyone in or authorized to act on behalf of the Chamber; and lastly, no one from the Chamber has prepared or filed, or authorized any third-party to prepare and file on its behalf, a Response Brief in the Domain Dispute.
Respondent:
An additional submission was filed by "info@averycountychamber.com" It was deficient but is also being considered for the reasons stated above. Whoever filed this additional response states that "Ms Scott is an information associate and did not procure nor pay for the URL, this is correct. But I find it hard to believe that she would under oath say that she knew we did not pay for the URL because that is not true."
It goes on to request a time extension so that any necessary Declarations and Assurances required can be provided and to assert that "For the time being we have not dedicated one signatory because no one here wants to be legally harassed by Avery Dennison if they have done nothing wrong."
Preliminary Issue: Deficient Response/Additional Submission
A Response was received on November 18, 2011, after the deadline, and is deemed deficient. Also, an Additional Response was received after the deadline and is deemed deficient. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, has chosen, for the reasons set out above, to consider these deficient Responses. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Also, as a Preliminary matter, the evidence in this case supports a finding that the true party in interest is Stanley Pace and not the Avery County Chamber of Commerce. It appears that Stanley Pace transferred the disputed domain name to the Avery County Chamber of Commerce without their knowledge or consent. Because the disputed domain name is registered in the name of the Avery County Chamber of Commerce and because the Chamber disavows any knowledge of this matter, the Panel is ruling for Complainant for the reasons required by the Policy.
1 -The domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
2 - The Respondent Avery County Chamber of Commerce neither claims nor has any rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used in bad faith.
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."
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 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’s registration of a mark with a federal trademark authority establishes that complainant’s rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant has provided the Panel with evidence of its registration of the AVERY mark (Reg. No. 758,123 registered October 8, 1963) with the United States Patent and Trademark Office (“USPTO”). The Panel may find that Complainant has rights in the AVERY mark pursuant to Policy ¶ 4(a)(i).
Respondent has fully incorporated Complainant’s mark and merely added the generic top-level domain (“gTLD”) “.org” to it in order to create the disputed domain name. The addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). If the Panel finds that Respondent makes no other changes to Complainant’s mark in the disputed domain name, it may find that the <avery.org> domain name is identical to Complainant’s AVERY mark under Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent Avery County Chamber of Commerce claims no rights or legitimate interests in the disputed domain name.
As to Stanley Pace, he is not commonly known by the <avery.org> domain name. Past panels have examined information in the record, including the disputed domain name’s WHOIS listing and the complainant’s contentions, to determine whether or not the respondent is commonly known by a disputed domain name. See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). The Panel finds that the WHOIS record for the disputed domain name lists “Avery County Chamber of Commerce” as the domain name registrant. Additionally, Complainant argues that Respondent has no connection to Complainant and is not authorized to use the AVERY mark in full or in part. The Panel finds that this evidence, coupled by Respondent’s failure to contradict this evidence through a Response, supports the finding that Respondent is not commonly known by the <avery.org> domain name under Policy ¶ 4(c)(ii).
Complainant claims that use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Previous panels have found that the operation of a pay-per-click website does not fall within the realm of Policy ¶¶ 4(c)(i) and 4(c)(iii) protected uses. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that Respondent registered the disputed domain name on December 21, 1998, after Complainant’s registration of the AVERY mark with the USPTO in 1963. Additionally, Complainant argues that the <avery.org> domain name resolves to a website which, under headings such as “Shop for Avery Labels” and “Office Depot: Ink & Toner,” links are displayed to goods and services which compete with Complainant in the office supply market. The Panel finds that Respondent’s use of the disputed domain name to display links to goods and services which compete with the Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that a lack of rights and legitimate interests is evidenced by offers to sell the domain name. Offers to sell domain names have been found by previous panels to demonstrate a lack of rights and legitimate interests. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel finds that Respondent’s offer to sell the domain name demonstrates Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant argues that bad faith is verified by the display of an offer for the sale of the <avery.org> domain name. The panels in Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), and Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000), found that a general offer for sale was enough for a finding of bad faith. The Panel finds that Respondent’s display of an offer for sale on the <avery.org> domain name’s resolving website is evidence that Respondent registered and is using the <avery.org> domain name in bad faith under Policy ¶ 4(b)(i).
The registration and use of the disputed domain name operates to disrupt the business of Complainant. Display of links to websites which compete with the complainant is disruptive to the complainant. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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)). Therefore, the Panel finds that Respondent’s <avery.org> domain name is disruptive to Complainant, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
The domain name was registered and is being used to take advantage of Internet users’ mistakes as to whether the <avery.org> domain name is affiliated with Complainant and Complainant’s AVERY mark, which it is not. The disputed domain name is identical to Complainant’s mark and Internet users will likely presume that Respondent’s <avery.org> domain name is connected to Complainant’s mark. Once entering the resolving website, the Internet users will become more certain as to this affiliation given the similar goods and services being linked to and the use of Complainant’s mark in the headings of the links, such as “AVERY Label.” Furthermore, the Panel finds that, given that the Internet users will have formed the opinion that Complainant must be sponsoring the <avery.org> domain name in some way, the Internet users will click through the displayed links, for which the Panel may infer that Respondent receives compensation. Respondent registered and is using the disputed domain name in order to take advantage of the profitability of confusing Internet users into believing that the <avery.org> domain name was associated with Complainant’s AVERY mark under Policy ¶ 4(b)(iv), which constitutes bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).”).
Complainant also contends that the disputed domain name could not have been registered and used without actual or constructive knowledge of Complainant and its rights in the AVERY mark. It is obvious to this Panel that the registrant had actual knowledge of Complainant's trademark rights given the content of the disputed domain site. It was registered and is being used in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
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.org> domain name be TRANSFERRED from Respondent to Complainant,
Daniel B. Banks, Jr., Panelist
Dated: December 16, 2011
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