Avery Dennison Corporation v. n/a c/o Richard Jones
Claim Number: FA0807001213556
Complainant is Avery Dennison Corporation (“Complainant”), represented by Victor
K. Sapphire, of Connolly Bove Lodge & Hutz LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <averytemplates.com>, registered with Enom, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 2, 2008.
On July 2, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <averytemplates.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
11, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 31, 2008
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@averytemplates.com by
e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." 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 makes the following assertions:
1. Respondent’s <averytemplates.com> domain name is confusingly similar to Complainant’s AVERY mark.
2. Respondent does not have any rights or legitimate interests in the <averytemplates.com> domain name.
3. Respondent registered and used the <averytemplates.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Avery Dennison Corporation, is a global leader
in pressure-sensitive technology, innovative self-adhesive solutions for
consumer products, label materials and computer template software in the
Respondent registered the <averytemplates.com> domain name on March 11, 2004. The disputed domain name currently resolves to a website containing third-party links, some of which are in direct competition with Complainant’s business.
Additionally, Respondent has been the respondent in several UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those proceedings. See First Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Yokohama Tire Corp. v. Jones, FA 739888 (Nat. Arb. Forum Aug. 3, 2006).
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 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.”).
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.
The Panel finds Complainant has established rights to the
AVERY mark based upon its trademark registration with the USPTO. Therefore, the Panel recognizes Complainant’s
rights in the AVERY mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <averytemplates.com> domain name contains Complainant’s AVERY mark in its entirety. The addition of “templates” does not diminish the similarity because the term is descriptive of Complainant’s business. The addition of the generic top-level domain (“gTLD”) “.com” is irrelevant since all domain names require a top-level domain. Therefore, the Panel finds that Respondent’s <averytemplates.com> domain name is confusingly similar to Complainant’s AVERY mark pursuant to Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing
that Respondent does not have rights or legitimate interests in the disputed
domain name. Once Complainant has made a
prima facie case showing that
Respondent lacks rights and legitimate interests, the burden shifts to
Respondent to show that it does have rights or legitimate interests in the <averytemplates.com> domain name. The Panel finds that Complainant has met the
initial burden of showing that Respondent lacks rights and legitimate
interests, and therefore has made a prima
facie case under Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Complainant asserts that Respondent has never been
authorized to use the AVERY mark, and that Respondent is not and has never been
commonly known by the disputed domain name.
Further, the WHOIS information does not indicate that Respondent is
commonly known by the disputed domain name.
Thus, the Panel finds that Respondent is not commonly known by the <averytemplates.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent is using the <averytemplates.com> domain name to advertise links to third-party competitors. The Panel finds that such use 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <averytemplates.com> domain name to
commercially gain by advertising links to competing services constitutes bad
faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <averytemplates.com> domain name for
commercial gain by advertising links to competing services, and benefiting from
the likely confusion between Complainant’s mark and the disputed domain
name. The Panel finds that the
similarity between the disputed domain name and the AVERY mark is likely to
create confusion as to Complainant’s source, sponsorship, affiliation, or
endorsement of the website that resolves from the disputed domain names which
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista
Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes); see also
Additionally, Respondent has been the respondent in several
UDRP proceedings in which the disputed domain names were transferred from
Respondent to the respective complainants in those proceedings. See
First Mariner Bank v. Jones, FA 692491 (Nat. Arb. Forum June 12, 2006); see also Yokohama Tire Corp. v. Jones, FA 739888 (August 3, 2006). Therefore, the Panel finds this to be evidence
of bad faith registration and use under Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark,
D2004-1028 (WIPO Jan. 22, 2005 ((finding that
“Respondent has registered the disputed domain name, <aria.com>, to
prevent Complainant from registering it” and taking notice of another UDRP
proceeding against the respondent to find that “this is part of a pattern of
such registrations”); see also Nat’l Abortion Fed’n v. Dom 4
Sale, Inc., FA 170643 (Nat. Arb. Forum
Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the
domain name prevented the complainant from reflecting its mark in a domain name
and the respondent had several adverse decisions against it in previous UDRP
proceedings, which established a pattern of cybersquatting).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <averytemplates.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 14, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum