national arbitration forum

 

DECISION

 

Avery Dennison Corporation v. Above.com Domain Privacy

Claim Number: FA1208001458846

PARTIES

Complainant is Avery Dennison Corporation (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA.  Respondent is Above.com Domain Privacy (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <avery-zwckform.com>, registered with ABOVE.COM PTY LTD.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 20, 2012; the National Arbitration Forum received payment on August 20, 2012.

 

On August 21, 2012, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <avery-zwckform.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.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 August 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@avery-zwckform.com.  Also on August 22, 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 September 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 Not-ices, 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

 

Complainant markets pressure-sensitive, self-adhesive labels for consumer- and office products.

 

Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”) for the AVERY trademark (including Reg. No. 2,178,789 registered August 4, 1998), and for the ZWECKFORM mark (including Reg. No. 1,405,793 registered August 19, 1986). 

 

Respondent registered the <avery-zwckform.com> domain name on February 13, 2012.

 

Respondent’s <avery-zwckform.com> domain name is confusingly similar to Complainant’s AVERY and ZWECKFORM marks.

 

Respondent has not been commonly known by the <avery-zwckform.com> domain name.

 

Respondent is not licensed to use Complainant’s marks, and Respondent has no relationship with Complainant.

Respondent is not making a bona fide offering of goods or services or a noncom-mercial or fair use of the <avery-zwckform.com> domain name.

 

Respondent employs the disputed domain name to host hyperlinks that resolve to the websites of Complainant’s commercial competitors.

 

Respondent benefits commercially from the operation of the website resolving from the contested domain name.

 

Respondent has neither any rights to nor any legitimate interests in the disputed domain name.

 

Respondent's registration and use of the <avery-zwckform.com> domain name is in bad faith.

 

Respondent knew of Complainant’s rights in the AVERY and ZWECKFORM trademarks when it registered the contested domain name.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to trademarks in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the AVERY and ZWECKFORM trademarks under Policy ¶ 4(a)(i) by virtue of its registration of the marks with a national trademark authority, the USPTO.  See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

This is true without regard to whether Complainant has registered the marks in a jurisdiction (here the United States) other than that of Respondent’s residence or place of business (here Australia).  See, for example, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant under the Policy whether a UDRP complainant has registered its trademark in the country of a respondent’s residence).

 

Turning to the central question arising under Policy ¶ 4(a)(i), we are persuaded from our review of the record that Respondent’s <avery-zwckform.com> domain name is confusingly similar to Complainant’s AVERY and ZWECKFORM marks.  Respondent’s combining of two of Complainant’s marks, one of them misspelled, in a single domain name does not distinguish the domain name from either of them.  See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding the <littmanncardiologyiii.info> domain name confusingly similar to a complain-ant’s LITTMANN and CARDIOLOGY III marks).  

 

Similarly, the addition of the gTLD “.com” to the combination of Complainant’s marks in forming the disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis because every domain name requires a gTLD.  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well[-]established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

Finally, that the disputed domain name also contains a hyphen does not remove it from the realm of confusing similarity.  See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change.  Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). 

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):

 

Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy.  Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name.  Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy. 

 

We begin by noting that Complainant alleges, and Respondent does not deny,

that Respondent has not been commonly known by the <avery-zwckform.com> domain name, that Respondent is not licensed to use Complainant’s marks, and that Respondent has no relationship with Complainant.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Above.com Domain Privacy,” which does not resemble the domain name.  On this record we conclude that Respondent has not been commonly known by the disputed domain name so as to have rights to or legitimate interest in the domain name within the meaning of Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), where there was no evi-dence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by the domain name, and where a complain-ant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We next observe that Complainant contends, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a non-commercial or fair use of the <avery-zwckform.com> domain name in that Re-spondent employs the domain name to host hyperlinks that resolve to the web-sites of Complainant’s commercial competitors, and that Respondent benefits commercially from the operation of those hyperlinks.  This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii).  See Microsoft Corp. v. BARUBIN, FA 1174478  (Nat. Arb. Forum May 6, 2008):

 

Respondent maintains a website … which … contains links to other third-party websites.  Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s employment of the contested <avery-zwckform.com> domain name, which is confusingly similar to Complainant’s AVERY and ZWECKFORM trademarks, to facilitate Respondent’s hosting of hyperlinks to the websites of commercial enterprises competing with the business of Complainant, disrupts Complainant’s business and therefore stands as evidence of bad faith regis-tration and use of the domain name under Policy ¶ 4(b)(iii).  See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that a re-spondent’s use of a website resolving from a domain name, which domain name was confusingly similar to the mark of a UDRP complainant, to divert Internet users to the websites of that complainant’s commercial competitors demon-strated bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)).

 

Respondent attempts, by employing a domain name which is confusingly similar to two of Complainant’s trademarks, to create confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name.  When to this is added the fact that Respondent attempts to profit commercially from the oper-ation of the hyperlinks hosted on the website resolving from the domain name, as alleged in the Complaint, it is apparent that Respondent has registered and uses the domain name in bad faith 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 web-site which features links to … commercial websites from which Respondent presumably receives referral fees. Such use for Re-spondent’s own commercial gain is evidence of bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv).

 

We are also persuaded from the evidence that Respondent knew of Complain-ant’s rights in the AVERY and ZWECKFORM marks when it registered the contested domain name.  This, too, is evidence of bad faith registration of the domain name.  See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008):

 

That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <avery-zwckform.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  October 1, 2012

 

 

 

 

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