Avery Dennison Corporation v. Horoshiy,
Inc. a/k/a Horoshiy
Claim
Number: FA0406000289048
Complainant is Avery Dennison Corporation (“Complainant”),
represented by David J. Steele of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D.
Rooseveltweg, #518, Curacao, AN.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <averydesignpro.com> and <averyprint.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 22, 2004; the Forum received a hard copy of the
Complaint on June 23, 2004.
On
June 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the Forum that the domain names <averydesignpro.com> and <averyprint.com>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
June 30, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 20, 2004 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@averydesignpro.com
and postmaster@averyprint.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
July 23, 2004, 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <averydesignpro.com>
and <averyprint.com> domain names are confusingly similar to
Complainant’s AVERY and DESIGNPRO marks.
2. Respondent does not have any rights or
legitimate interests in the <averydesignpro.com> and <averyprint.com>
domain names.
3. Respondent registered and used the <averydesignpro.com>
and <averyprint.com> domain names 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 software in the United States and around the world.
Complainant
holds trademark registrations with the United States Patent and Trademark
Office for the AVERY mark (Reg. No. 2,009,493 issued October 22, 1996 and Reg.
No. 2,178,789 issued August 4, 1998) and for the DESIGNPRO mark (Reg. No.
2,611,215 issued August 27, 2002).
Complainant
began using the AVERY and DESIGNPRO marks as early as 1998 in connection with
labels and stationary merchandise.
Additionally, Complainant also offers a wide range of computer software
for designing and printing labels under these marks. For each of the last three years, Complainant’s sales have
approximated $4 billion.
Complainant operates
its main website at the <averydennison.com> domain name.
Respondent
registered the <averydesignpro.com> and <averyprint.com>
domain names on March 11 and 12, 2004, respectively. Respondent is using the domain names to redirect Internet users
to a website that features advertising for a variety of services and hosts a
search engine to link viewers to a variety of websites, predominantly including
sites that offer Complainant’s office products and similar products.
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.
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.
Complainant has
established that it has rights in the AVERY and DESIGNPRO marks through
registrations with the United States Patent and Trademark Office and through
continued use of its marks in commerce over the last six years. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
Respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction.).
Respondent’s
domain name is confusingly similar to Complainant’s AVERY and DESIGNPRO
marks. The <averydesignpro.com>
domain name is confusingly similar because the domain name incorporates
Complainant’s marks and only deviates with a combination of the marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where Respondent combined Complainant’s POKEMON
and PIKACHU marks to form the <pokemonpikachu.com> domain name); see
also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum
Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical
drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the
capacity of the disputed domain name to confuse Internet users, but actually
“adds to the potential to confuse”).
Respondent’s <averyprint.com>
domain name is also confusingly similar to Complainant’s AVERY mark because the
domain name incorporates Complainant’s mark in its entirety and merely adds the
generic or descriptive term, “print.”
The addtion of a generic or descriptive term to Complainant’s mark does
not negate the confusing similarity of Respondent’s domain name pursuant to
Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with Complainant’s registered mark “LLBEAN”
does not circumvent Complainant’s rights in the mark nor avoid the confusing
similarity aspect of the ICANN Policy).
Therefore,
Complainant has established Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in the disputed
domain names that contain in their entirety, one or both of Complainant’s
marks. Due to Respondent’s failure to
respond to the Complaint, the Panel will assume that Respondent lacks rights
and legitimate interests in the disputed domain names. In fact, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have such rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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 with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names).
Moreover, where
Respondent does not respond, the Panel may accept all reasonable allegations
and inferences in the Complaint as true.
See 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.”); see also
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of Complainant to be
deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA
110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent is
using the <averydesignpro.com> and <averyprint.com>
domain names to redirect Internet users to a website that features advertising
for a variety of services and hosts a search engine to link viewers to a
variety of websites, including sites that offer the same and similar types of
products that Complainant offers online.
Respondent’s use of domain names that are confusingly similar to
Complainant’s AVERY and DESIGNPRO marks to redirect Internet users interested
in Complainant’s products to a commercial website that offers a search engine
unrelated to Complainant’s products and services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and
it is not a legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶ 4(c)(iii). See eBay
Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of
complainant’s entire mark in infringing domain names makes it difficult to
infer a legitimate use."); see also Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that Respondent’s use of the
disputed domain name to host a series of hyperlinks and a banner advertisement
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of
goods or services where Respondent used Complainant’s mark without
authorization to attract Internet users to its website, which offered both
Complainant’s products and those of Complainant’s competitors).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <averydesignpro.com> and <averyprint.com>
domain names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc.,
FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights
or legitimate interests in domain names because it is not commonly known by
Complainant’s marks and Respondent has not used the domain names in connection
with a bona fide offering of goods and services or for a legitimate
noncommercial or fair use); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
Respondent
intentionally registered the disputed domain names that contain Complainant’s
marks for Respondent’s commercial gain.
Respondent’s domain names divert Internet users seeking Complainant’s
services to Respondent’s commercial websites through the use of domain names
that are confusingly similar to Complainant’s marks. Furthermore, Respondent is unfairly and opportunistically
benefiting from the goodwill associated with Complainant’s AVERY and DESIGNPRO
marks. Respondent’s practice of
diversion, motivated by commercial gain, constitutes bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). 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 Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent); see also Kmart
v. Khan, 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)).
Respondent is
using the <averydesignpro.com> and <averyprint.com>
domain names to redirect Internet users to a search engine that provides links
to a variety of websites, predominantly including sites that offer
Complainant’s and similar office products and labels. Complainant’s business also offers office products and
labels. The Panel finds that, by
creating confusion around Complainant’s marks, Respondent is attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s marks to sell goods and services
similar to Complainant’s goods and services is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com>
domain name from Respondent, a watch dealer not otherwise authorized to sell
Complainant’s goods, to Complainant); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001) (finding that, given the competitive relationship between
Complainant and Respondent, Respondent likely registered the contested domain
name with the intent to disrupt Complainant's business and create user
confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business).
Complainant has
established 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 <averydesignpro.com> and <averyprint.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
August 2, 2004
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