Avery Dennison Corporation
v.
Claim Number: FA0612000873273
PARTIES
Complainant is Avery Dennison Corporation (“Complainant”), represented by David
J. Steele, of Christie, Parker & Hale, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dennison-hesperia.com>, registered
with DotRegistrar.com.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Jeffrey M. Samuels, Hon. Carolyn M. Johnson (Ret.), and M. Kelly
Tillery, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On December 28, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 17, 2007 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@dennison-hesperia.com
by e-mail.
A Response was untimely received on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1881, Dennison Manufacturing Co. and its successors in interest
have used the mark DENNISON in connection with paper products and office
supplies. Complainant Avery Dennison
Corp. was formed in 1990 from the merger of Dennison Manufacturing Co. and
Avery International Corp. For each of
the past three years, Complainant’s total product sales (both consumer and
industrial) have been approximately $4 billion.
Complainant owns numerous registrations for its DENNISON marks around
the world (see Exhibit 3 to Complaint), including U.S. Registration No. 70,426
(see Exhibit 2) and Spanish Registration No. 2,022,371 (see Exhibit 4).
The disputed domain name <dennison-hesperia.com>
was registered by Respondent on November 12, 1998. Respondent Dennison-Hesperia S.A. is a former
licensee of Complainant.
Complainant contends that the disputed domain name is confusingly
similar to the DENNISON mark insofar as it merely includes a hyphen between the
DENNISON mark and the geographically descriptive term “Hesperia.” According to Complainant, the term “Hesperia”
merely refers to
Complainant further argues that Respondent has no rights or legitimate
interests in the <dennison-herperia.com>
domain name. Complainant maintains that
Respondent registered and is using the domain name to misdirect Internet users
to its website which offers goods that directly compete with Complainant. See
Complaint, Exhibit 5. None of the
products offered at Respondent’s website are DENNISON or AVERY DENNISON
products. As a result, Complainant
argues, Respondent cannot be found to be using the domain name in connection
with a bona fide offering of goods or
services under paragraph 4(c)(1) of the Policy.
Respondent’s registration and use of the subject domain name also
violates the parties’ former license agreement, Complainant urges. It points out that, in 1994, Complainant sold
its wholly-owned Spanish distributing company, Dennison España S.A., to
Upon
termination of this Agreement for whatever cause or reason, all rights and
obligations of the parties shall cease and terminate, including [Dennison
España S.A.’s] right to use the Dennison trade name, trademarks and patents
described in clause 8.1 of this Agreement.
Section 8.1 of the Agreement further provides, in pertinent part, that
“all intellectual property rights, including trademarks or patents to the
Products, shall at all times remain vested in [Complainant] or its subsidiaries
or affiliated companies.”
As a result, Complainant contends, Respondent does not own any
intellectual property rights in the domain name, or in the DENNISON mark, and
is no longer authorized to distribute Complainant’s goods or use the DENNISON
mark. Respondent’s registration of the
domain name, Complainant asserts, constitutes a material breach of the license
agreement with Complainant.
Complainant argues that Respondent has registered and is using the
domain name in bad faith in that, through its use of the domain name,
Respondent is intentionally attempting to attract, for commercial gain,
internet users to its website by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation or endorsement of
such site, in violation of paragraph 4(b)(iv) of the Policy. In support of its assertion of “bad faith”
registration and use, Complainant also alleges that Respondent registered the
domain name in violation of the license agreement, that Respondent knew of
Complainant’s rights in the DENNISON mark at the time of registration, and that
the disputed domain name is confusingly similar to a mark that is obviously
connected with Complainant.
B. Respondent
Respondent contends that this proceeding was brought as leverage to
curtail Respondent’s challenge to the Community Trademark application filed by
Complainant for the mark AVERY-DENNISON.
It also maintains that the instant matter raises a number of issues that
cannot be resolved without a meaningful opportunity to take discovery. These issues include whether Complainant’s
authorization to use the DENNISON mark extended to a company acquired by
Respondent’s predecessor, Complainant’s knowledge of, and acquiescence to,
Respondent’s challenged website and to Respondent’s use of the “Dennison-Hesperia”
trade and corporate name, and the effect of Respondent’s registration in
According to Respondent, Complainant’s predecessor, Dennison
International Co., “authorized” its related company,
Respondent points out that, towards the end of the term of the
distribution agreement, Complainant advised Respondent that the agreement would
not be renewed upon its termination in February 1999. In response, Respondent, in a letter dated
Respondent also asserts that the disputed domain name is not
confusingly similar to Complainant’s marks.
Respondent contends that the domain name contains the distinguishing
feature “Hesperia.” Respondent indicates
that Complainant presented no evidence to support its assertion that “Hesperia”
is a geographic indication to
Even if “hesperia’ is a geographically descriptive term, Respondent
maintains, it is still a distinguishing feature of the challenged domain
name. Such terms, Respondent notes, may
acquire distinctiveness based on use and Respondent has been using the word
“hesperia” as part of its business name, Manufacturas Hesperia, since 1956, and
in its “Dennison Hesperia” name since 1996.
During the past ten years alone, Respondent observes that it has sold
approximately 15 million euros worth of products under this name.
Respondent further points out that while Complainant, at one point,
owned a trademark registration (No. 36,740) in
Respondent emphasizes that it owns a registration (No. 1,966,088) for
the DENNISON mark in
Respondent also argues that it has legitimate interests in the <dennison-hesperia.com> domain name. It reiterates that it has been using the
domain name since 1998, and has been using the corporate and trade name
Moreover, Respondent asserts, Complainant’s failure to bring this ICANN
proceeding for more than eight years since Respondent registered the disputed
domain name evidences Respondent’s valid and legitimate claim to the site.
Respondent also maintains that it registered and is using the disputed
domain name in good faith. It contends
that it has been using the name long prior to having received any notice of the
instant challenge made by Complainant, is commonly known by the name “Dennison-Hesperia,”
and owns a registration in
Respondent argues that it has not breached the distribution agreement between
the parties. Paragraph 4.3 of the
agreement, Respondent notes, refers to the termination of Respondent’s “right
to use the Dennison trade name, trademarks and patents described in clause 8.1
of [the agreement],” but clause 8.1 does not reference the DENNISON mark.
Finally, Respondent urges that Complainant has engaged in “reverse
domain name hijacking.” In support of
such assertion, Respondent contends that Complainant failed to: (1) object to
Respondent’s use of the disputed domain name for more than eight years; (2)
challenge Respondent’s use of the “Dennison-Hesperia” trade and corporate name
for more than seven years since the expiration of the distribution agreement;
(3) respond to Respondent’s assertion of its intent to continue to use the “Dennison-Hesperia”
trade and corporate name; and (4) acknowledge Respondent’s ownership of the
registered mark DENNISON in Spain.
FINDINGS
The Panel determines that: (1) Complainant
has rights in the DENNISON mark; (2) that the domain name is confusingly
similar to the mark; (3) that Respondent has rights or legitimate interests in
the domain name; (4) that the domain name was not registered in bad faith; and
(5) Complainant did not engage in reverse domain name hijacking.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that Complainant has
established, through its ownership of registrations for, and use of, the
DENNISON mark, rights in the mark.
The Panel[5]
further concludes that the disputed domain name dennison-hesperia.com is
confusingly similar to the DENNISON mark.
The parties dispute whether the term “hesperia” is geographically
descriptive and, thus, of weak trademark significance absent proof of secondary
meaning. However, even if, as Respondent
contends, “Hesperia” is not an actual geographical term, the Panel notes that
the term “dennison” constitutes the first and, thus, dominant portion of the
domain name and that the domain name incorporates Complainant’s mark in its
entirety.
The Panel further concludes that Respondent has rights or legitimate
interests in the domain name. The
evidence establishes that Complainant’s predecessor in interest, in 1990,
authorized Respondent’s predecessor in interest to register and use the
DENNISON name in
Given the determination that
Respondent registered the domain name during a period of time when it was authorized
by Complainant to register and use the DENNISON mark in
DECISION
Finding that all three elements required under the ICANN Policy have
not been established by Complainant, the Panel concludes that relief shall be DENIED.
Jeffrey M. Samuels, Hon. Carolyn M. Johnson
(Ret.), and M. Kelly Tillery, Panelists
Dated: March 5, 2007
[1] The Panel has been informed that while the electronic copy of the Response was timely received on January 17, 2007, the hard copy of the Response and payment for the three-member panel were untimely received on January 18, and that, as a result, the National Arbitration Forum does not consider the response to be in compliance with ICANN Rule 5. Exercising its general powers under Rule 10, including the power to ensure that each party is given a fair opportunity to present its case, the Panel decides to consider Respondent’s Response.
[2] In 1996,
[3] The
“Authorization” authorizes Dennison España to register and use the DENNISON
name in
[4] The letter states, in part, as follows: “As agreed, I am sending you a copy of the authorization for our company to use the Dennison trademark, preserving the rights of Dennison Manufacturing Co. in trademark no. 36740, as has been done.”
[5] Panelist Tillery dissents from this portion of the Panel’s decision. Panelist Tillery finds that the term “Hesperia” in the domain name is a significant part of the name and acts to diminish any possible confusion.
[6] Panelist Johnson would not reach the issue of bad faith registration and use in view of the Panel’s finding on the issue of rights or legitimate interests.
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