national arbitration forum

 

DECISION

 

Avery Dennison Corporation v. Dong Ji Lee

Claim Number: FA1207001456125

 

PARTIES

Complainant is Avery Dennison Corporation (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Hutz LLP, California, USA.  Respondent is Dong Ji Lee (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <averytemplets.com>, registered with TUCOWS, INC.

 

PANEL

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.

 

Hon. Karl V. Fink (Ret.), as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the National Arbitration Forum received payment on July 31, 2012.

 

On August 1, 2012, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <averytemplets.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name.  TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 August 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2012 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@averytemplets.com.  Also on August 7, 2012, 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 August 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

  1. Complainant claims:
    1. Complainant uses the AVERY mark in connection with adhesive, paper, and office products that Complainant designs, markets, and sells.
    2. Complainant owns trademark registrations throughout the world for the AVERY mark, including a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 758,123 registered October 8, 1963).
    3. Respondent’s <averytemplets.com> domain name is confusingly similar to Complainant’s AVERY mark.
    4. Respondent is not commonly known by the <averytemplets.com> domain name.
    5. Respondent uses the <averytemplets.com> domain name to resolve to a website that contains hyperlinks to websites offering directly competing products.
    6. Respondent attempts to attract Internet users for commercial gain by creating a likelihood of confusion.
    7. Respondent likely had knowledge of Complainant’s AVERY mark when Respondent registered the <averytemplets.com> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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 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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant claims that it uses the AVERY mark in connection with adhesive, paper, and office products that Complainant designs, markets, and sells.  Complainant argues that it owns rights in the AVERY mark under Policy ¶ 4(a)(i).  In Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), the panel found that a trademark registration adequately demonstrated a complainant’s rights in a mark under Policy ¶ 4(a)(i).  In its Complaint, Complainant provides the Panel with a long list of trademark registrations.  However, the Panel notes Complainant only provides the registration numbers and does not provide the registration dates or any evidence of these trademark registrations.  Complainant only provides a copy of its certificate for Complainant’s USPTO trademark registration for the AVERY mark (Reg. No. 758,123 registered October 8, 1963).  The Panel further notes Respondent does not reside or operate in the United States.  However, in Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the Panel determined that it did not matter whether or not the complainant had registered its trademark in the country in which the respondent resided, only that the complainant could establish rights in some jurisdiction.  Therefore, the Panel concludes Complainant owns rights in the AVERY mark under Policy ¶ 4(a)(i) based on Complainant’s USPTO trademark registration for the mark.

 

Complainant next contends that Respondent’s <averytemplets.com> domain name is confusingly similar to Complainant’s AVERY mark.  Complainant asserts that Respondent adds the misspelled, descriptive term “templets,” allegedly a misspelling of the term “templates,” and the generic top-level domain (“gTLD”) “.com.”  In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel concluded that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark.  The Panel makes a similar determination in this case and holds Respondent’s <averytemplets.com> domain name is confusingly similar to Complainant’s AVERY mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has proven this element.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).

 

Complainant alleges that Respondent is not commonly known by the <averytemplets.com> domain name.  Complainant argues that Respondent is not connected with Complainant and is not authorized to use Complainant’s AVERY mark.  The Panel notes that the WHOIS information identifies the registrant of the <averytemplets.com> domain name as “Dong Ji Lee” and that, due to Respondent’s failure to respond, there are no arguments or evidence in the record contradicting Complainant’s claims.  In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name.  In drawing comparisons between the current case and the facts in Reese v. Morgan, the Panel finds Respondent is not commonly known by the <averytemplets.com> domain name for the purpose of Policy ¶ 4(c)(ii). 

 

Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <averytemplets.com> domain name.  According to Complainant, Respondent uses the <averytemplets.com> domain name to resolve to a website that contains hyperlinks to websites offering directly competing products.  See Complainant’s Exhibit E.  In H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.  As Respondent is allegedly using the disputed domain name to host competing hyperlinks, the Panel concludes 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 <averytemplets.com> domain name. 

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

Complainant avers that Respondent is guilty of Policy ¶ 4(b)(iv) bad faith registration and use.  Complainant accuses Respondent of creating the impression that Complainant endorses or sponsors the competing hyperlinks found on the resolving website.  Complainant alleges that Respondent commercially benefits from these hyperlinks.  The Panel infers Respondent receives click-through fees from the hyperlinks.  In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated that the “[r]espondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which [the respondent] presumably receives referral fees.   Such use for [the respondent’s] own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”  The Panel agrees with the Salvia Corp. panel’s holding and finds that Respondent registered and uses the <averytemplets.com> domain name in bad faith according to Policy ¶ 4(b)(iv). 

 

According to Complainant, Respondent likely had knowledge of Complainant’s AVERY mark when Respondent registered the <averytemplets.com> domain name.  Complainant contends that Complainant’s trademark registrations for, and widespread use of, the AVERY mark ensures that Respondent had knowledge of Complainant’s rights in the mark.  However, in BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010), the panel determined that constructive notice, knowledge established by trademark registrations, will usually not support a finding of bad faith.  Alternatively, Complainant claims that Respondent’s use of Complainant’s mark in the disputed domain name and on the resolving website, as well as Respondent’s provision of directly competing hyperlinks, is evidence that Respondent had actual knowledge of Complainant’s rights in the mark.  In Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007), the panel held that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "  had actual knowledge of Complainant's mark when registering the disputed domain name."  Consequently, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the AVERY mark and concludes Respondent registered the <averytemplets.com> domain name in bad faith under Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <averytemplets.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

/S/ Karl V. Fink

 

Hon. Karl v. Fink (Ret.), Panelist

Dated:  September 10, 2012

 

 

 

 

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