Avery Dennison Corporation v. Jet Stream Enterprises Limited / Jet Stream
Claim Number: FA1208001458848
Complainant is Avery Dennison Corporation (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is Jet Stream Enterprises Limited / Jet Stream (“Respondent”), Antigua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <averydennisson.com>, registered with ENOM, INC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2012; the National Arbitration Forum received payment on August 20, 2012.
On August 21, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <averydennisson.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@averydennisson.com. Also on August 28, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Avery Dennison Corporation, is a global leader in roll materials, graphics and reflective materials, films, and medical material in the United States and around the world.
Complainant owns the AVERY DENNISON mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,600,895 registered July 30, 2002).
Respondent, Jet Stream Enterprises Limited / Jet Stream, registered the <averydennisson.com> domain name on October 4, 2007.
The <averydennisson.com> domain name is confusingly similar to the AVERY DENNISON mark, merely adding the letter “s” to the DENNISON portion of the mark. The addition of the generic top-level domain (“gTLD”) “.com” is insufficient to avoid a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not licensed Respondent to use Complainant’s mark, and Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a parked website featuring links to various products and businesses, including some that compete with Complainant.
Respondent’s typosquatting is further evidence of its lack of rights and legitimate interests in the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith.
Respondent’s use of the disputed domain name for pay-per-click advertising supports a finding of bad faith under Policy ¶ 4(b)(iv).
Respondent’s use of the disputed domain name also falls under Policy ¶ 4(b)(iii).
Respondent had constructive knowledge of Complainant’s rights in the AVERY DENNISON mark prior to registering the disputed domain name.
Respondent’s act of typosquatting is, in and of itself, evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns several USPTO registrations for its well-known AVERY DENNISON mark.
Complainant has not licensed Respondent to use Complainant’s trademark.
Respondent, Jet Stream Enterprises Limited / Jet Stream, registered the <averydennisson.com> domain name on October 4, 2007.
Respondent had actual knowledge of Complainant’s rights in the AVERY DENNISON mark prior to registering the disputed domain name.
Respondent uses the at-issue domain name for pay-per-click advertising. The disputed domain name resolves to a parked website featuring links to various products and businesses, including some that compete with Complainant.
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.”).
Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights.
Complainant establishes rights in the AVERY DENNISON mark under Policy ¶ 4(a)(i) through its various trademark registrations with the USPTO and does so notwithstanding that that Respondent may reside outside of the USPTO’s jurisdiction. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <averydennisson.com> domain name is confusingly similar to the AVERY DENNISON mark. Respondent simply inserts the letter “s” into the DENNISON portion of the trademark and appends the top level domain name “.com.” These slight changes are insufficient to avoid a finding of confusing similarity between the at-issue domain name and the AVERY DENNISON trademark pursuant to Policy ¶ 4(a)(i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information concerning the domain name’s registration does not support a finding that Respondent is commonly known by the disputed domain name. It lists the registrant as “Jet Stream Enterprises Limited / Jet Stream.” Additionally, there is no evidence before the Panel tending to prove that Respondent is commonly known by the <averydennisson.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name and therefore the record does not demonstrate Respondent’s rights or interests in respect of the at-issue domain name under Policy ¶ 4(c)(ii). See 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).
Furthermore, the at-issue domain name resolves to a parked website featuring links to various products and businesses, including some that compete with Complainant. In particular, the website features links under headings such as “Oil Industry,” “Avery Labels UK,” and “Avery Denison,” among others. Some of the link headings appear to be for businesses that are wholly unrelated to Complainant, while others appear to be for businesses or products in direct competition with Complainant. Using the domain name in this manner is 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 H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding 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 is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, Respondent’s apparent intentional misspelling of Complainant’s mark constitutes typosquatting and is further evidence of Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Indy Mac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sep. 19, 2003) (finding that a respondent lacked rights to an legitimate interests in disputed domain names because it "engaged in the practice of typo squatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter 'x' instead of the letter 'c"').
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above, many of the hyperlinks contained on Respondent’s <averydennisson.com> website appear to be for competing businesses and products. Such use of the domain name suggests that Respondent is intentionally disrupting Complainant’s business by routing Internet users to Complainant’s competitors and thereby conclusively demonstrates that Respondent registered and is using the at-issue domain name in bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Moreover, Respondent’s use of the disputed domain name for pay-per-click advertising also supports a finding of bad faith registration and use. As also noted above, Respondent’s at-issue domain name resolves to a website that features many third-party links to unrelated and competing products and businesses. It is reasonable to assume that Respondent is commercially profiting, or attempting to profit, from consumer misperception caused by the confusingly similar <averydennisson.com> domain name. These circumstances show that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). 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)(iv) 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).
The fact that Complainant’s trademark is well known to the consuming public, the fact that it is uniquely composed of two names, and the the manner in which Respondent uses the domain name leads to an inescapable inference that Respondent was aware of Complainant and the AVERY DENNISON mark when it registered <averydennisson.com>. Registering a confusingly similar domain name with knowledge that another has rights in such domain name, as Respondent has done here, demonstrates that Respondent registered the <averydennisson.com> in bad faith pursuant to Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent’s act of typosquatting, discussed above, is, in and of itself, significant evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of 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 <averydennisson.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 20, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page