Avery Dennison Corporation v. Ray Steele d/b/a Mercian Labels Ltd. and
selfadhesivelabels.com
Claim Number: FA0211000133626
PARTIES
Complainant is Avery
Dennison Corporation, Pasadena, CA, USA (“Complainant”) represented by Michael
K. Bosworth, of Oppenheimer, Wolff & Donnelly LLP. Respondent is Ray Steele d/b/a
Mercia Labels, LTD. and selfadhesivelabels.com Sutton Coldfield,
UNITED KINGDOM (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <averylabels.com>, registered with Melbourne IT, Ltd. d/b/a
Internet Names Worldwide.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on November
13, 2002; the Forum received a hard copy of the Complaint on November 18, 2002.
On November 13, 2002,
Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the
Forum that the domain name <averylabels.com> is registered with
Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the
current registrant of the name.
Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that
Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On November 18, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 9, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@averylabels.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On December 23, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
Having reviewed the
communications records, the Administrative Panel (the “Panel”) finds that the
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.” Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the 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 makes the
following assertions:
1. Respondent’s <averylabels.com>
domain name is confusingly similar to Complainant’s registered AVERY mark.
2. Respondent does not have
any rights or legitimate interests in the <averylabels.com> domain
name.
3. Respondent registered
and used the <averylabels.com> domain name in bad faith.
B. Respondent failed to
submit a Response in this proceeding.
FINDINGS
Complainant, Avery
Dennison Corp., holds numerous international trademarks reflecting its AVERY
family of marks. More specifically, Complainant holds the following
registrations, listed without limitation:
· AVERY: UK Reg. No.
856,329 for labels and materials for the manufacture thereof; labeling
machines, imprinting machines, label dispensers and label applicators, all for
office use.
· AVERY: UK Reg. No.
1,552,971 for labels and materials for the manufacture thereof; label
dispensers and label applicators, all for office use; diver sheets for labeling
the contents of binders.
· AVERY SUPERCLEAR: UK
Reg. No. 1,112,703 for translucent or transparent labels and materials for the
manufacture thereof.
· AVERY: U.S. Reg. No.
758,123 for unprinted labels and blank label stock, registered in 1963 and
first used in 1941.
· AVERY: U.S. Reg. No.
2,178,789 for, inter alia, highlighting markers and marking pens;
hanging file binders; report covers; transparent-plastic binder pages for
holding and displaying trading cards, business cards, and photographs.
Complainant is a
manufacturer of labels, which are marketed and sold internationally.
Complainant, through its predecessor company, holds five United Kingdom registrations
and five U.S. Patent and Trademark Office registrations for labels and
label-related goods. Complainant has promoted its labels and label-related
goods under the AVERY trademark since 1941, and has established significant
goodwill and secondary source identity in the industry by way of its AVERY
mark.
Respondent registered
the <averylabels.com> domain name on April 29, 2002. Complainant’s
investigation of Respondent reveals that Respondent is a specialized paper
manufacturer and allegedly buys and resells labels of competing label
manufacturers. When Internet users key the disputed domain name into the
Internet browser they are directed to Respondent’s <mercianlabels.com>
domain name and corresponding website. Respondent’s website indicates that it supplies
Complainant’s AVERY products. For example, one prominent webpage asks “are you
looking for a UK supplier of AVERY type LASER LABELS AND INK JET LABELS?,” and
further states “LOOK NO FURTHER FOR YOUR AVERY LASER LABELS AND INKJET LABELS.”
However, Respondent does not actually offer Complainant’s products for sale on
its website.
Respondent is not
authorized or licensed to use Complainant’s AVERY mark in any fashion.
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.”
In
view of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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.
Paragraph 4(a) of the
Policy requires that the 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.
Complainant has
established rights in the AVERY mark through registration with the relevant
trademark authorities in the United Kingdom and the United States, and
subsequent continuous use of the mark in commerce.
Respondent’s <averylabels.com>
domain name is confusingly similar to Complainant’s AVERY mark. Respondent’s
domain name incorporates Complainant’s mark in its entirety and merely adds the
term “labels,” a word that defines one of Complainant’s products. The addition
of an industry-related word to a second-level domain name increases the
likelihood of confusion among Internet users. Respondent’s use of a word that
describes the mark that is incorporated in the domain name renders the subject
domain name confusingly similar under a Policy ¶ 4(a)(i) analysis. See Space
Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where Respondent’s domain name combines Complainant’s mark
with a generic term that has an obvious relationship to Complainant’s
business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb.
Forum Mar. 13, 2000) (finding that Respondent’s domain name
<marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT
mark).
Furthermore, the addition
of a generic top-level domain is inconsequential when considering whether a
domain name is confusingly similar or identical to a mark. See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain “.com” after the name POMELLATO is not relevant).
The Panel finds that
Respondent’s <averylabels.com> domain name is confusingly similar
to Complainant’s mark and thus Policy ¶ 4(a)(i) has been satisfied.
In failing to submit a
Response, Respondent has failed to assert circumstances that may establish
rights or legitimate interests in <averylabels.com>. Complainant’s
submission of a prima facie case to the Panel effectively shifts the
burden to Respondent. Respondent’s failure to contest Complainant’s assertions
allows the Panel to accept all of Complainant’s reasonable inferences as true. See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences
of fact in the allegations of Complainant to be deemed true); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that
once Complainant asserts that Respondent has no rights or legitimate interests
in respect of the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name).
Complainant’s
uncontested evidence indicates that Respondent is advertising and selling
competing products under the AVERY mark without Complainant’s approval.
Additionally, Respondent uses the infringing domain name to acquire Internet
users’ initial interest and subsequently diverts them to its
<mercianlabels.com> website, where Respondent offers the products of
Complainant’s competitors. Respondent’s use of Complainant’s mark to divert
interested Internet users to competitors’ products does not constitute a bona
fide use of the domain name under Policy ¶ 4(c)(i). See N. Coast Med., Inc.
v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona
fide use where Respondent used the domain name to divert Internet users to its
competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks).
Complainant’s evidence
indicates that Respondent does not hold a trademark registration for
AVERYLABELS.COM, or any variation thereof. Respondent is known by “Mercian
Labels Ltd.” and “selfadhesivelabels.com.” Respondent’s website and contacts
indicate that Mercian Labels Ltd. is the owner of the website. Significantly,
no evidence suggests that Respondent is commonly known as <averylabels.com>
or AVERYLABELS. Additionally, Respondent is not authorized to make use of
Complainant’s AVERY mark for any purpose or in connection with the distribution
of competing products to the public. Therefore, Respondent fails to establish
rights in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question).
Evidence indicates that
Respondent is profiting from the use of Complainant’s mark, therefore Policy ¶
4(c)(iii)’s “noncommercial or fair use” criteria are inapplicable. Once
Internet users key the disputed domain name into the browser they are
redirected to Respondent’s commercial website. Respondent is operating under
the perception that Complainant has authorized and endorsed its
<mercianlabels.com> business, which Complainant has not done; thus,
Respondent’s deception fails to establish rights or legitimate interests in the
domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577
(Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of
the domain name to confuse and divert Internet traffic is not a legitimate use
of the domain name); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO
June 12, 2000) (finding that Respondent does not have a legitimate interest in
using the domain names <caterpillarparts.com> and
<caterpillarspares.com> to suggest a connection or relationship, which
does not exist, with Complainant's mark CATERPILLAR).
Accordingly, the Panel
finds that Respondent has no rights or legitimate interests in the <averylabels.com>
domain name; thus, Policy ¶ 4(a)(ii) is satisfied.
By registering and using
the <averylabels.com> domain name, Respondent intends to deceive
the public into believing that they could purchase AVERY brand labels on
Respondent’s website. As stated, Respondent does not actually sell
Complainant’s AVERY labels. Respondent sells its own specially manufacture
products and products of Complainant’s competitors. Respondent
opportunistically uses Complainant’s AVERY mark to generate awareness in
products that are contrary to Complainant’s interests. Respondent’s commercial
endeavor profits from the diversionary use of the domain name. Such activity
represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finding otherwise would allow Respondent to continually prosper from the
initial interest generated from the unauthorized use of Complainant’s mark. See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum
Nov. 21, 2002) (finding that Respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy 4(b)(iv)).
Accordingly, the Panel
finds that Respondent registered the <averylabels.com> domain name
in bad faith; thus, Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all
three elements required under ICANN Policy, the Panel concludes that relief
should be hereby GRANTED.
Accordingly, it is
Ordered that the <averylabels.com> domain name be TRANSFERRED from
Respondent to Complainant.
Honorable Paul A. Dorf (Ret.) Panelist
Dated: January 10, 2003
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