DECISION

 

Avery Dennison Corporation v. Sarah Wilkerson d/b/a Wilk Enterprises

Claim Number: FA0108000099593

 

PARTIES

The Complainant is Avery Dennison Corporation, Brea, CA (“Complainant”) represented by Michael K. Bosworth, of Oppenheimer, Wolff & Donnelly, LLP.  The Respondent is Sarah Wilkerson d/b/a Wilk Enterprises, Annapolis, MD (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <averylabels.com>, registered with Namesecure.com, Inc.

 

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.

 

James Alan Crary as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 29, 2001; the Forum received a hard copy of the Complaint on August 29, 2001.

 

On September 4, 2001, Namesecure.com, Inc. confirmed by e-mail to the Forum that the domain name <averylabels.com> is registered with Namesecure.com, Inc. and that the Respondent is the current registrant of the name.  Namesecure.com, Inc. has verified that Respondent is bound by the Namesecure.com, 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 September 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 24, 2001 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.

 

A timely response was received and determined to be complete on September 24, 2001.

 

On September 28, 2001 an additional response was received from the Complainant. The additional submission complied with Supplemental Rule 7.

 

An additional response was submitted by the Respondent but the response did not comply with Rule 7 as it was not timely and was not submitted with the appropriate fee. Respondent’s additional response was therefore not considered.

 

On October 8, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James Alan Crary as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is the owner of the trademark Avery (U. S. Registration No. 2009493) for computer software for designing and printing labels, other stationary paper products, business forms, divider sheets, adhesive tape, and other business products registered in 1996 and first used in 1998 and also U. S. Registration No. 2178789 for highlighting markers, marking pens, hanging file binders, report covers, other office products including self-adhesive label holders, gummed labels, etc., registered in 1998 and first used in 1995.

 

On January 6, 2000 Respondent registered the domain name <averylabels.com>. The disputed domain name was a mere combination of the Complainant’s trademark and the generic name of goods sold under the trademark.

 

The addition of the generic word “labels” and the top-level domain name “.com” does not negate that the Respondent’s domain name is confusingly similar to Complainant’s mark.

 

Complainant maintained that the Respondent did not manufacture or sell “Avery” labels. Respondent manufactures specialized paper products and claims to buy and resell labels of competing label manufacturers. Respondent was not commonly known by the name “Avery”, “Avery labels”, or <averylabels.com>. Respondent owned no trademark registrations for “Avery” “Avery labels”, or <averylabels.com>. Respondent was known by the name “Wilk Enterprises”.

 

Respondent had never been an official distributor or licensee of the Complainant nor had Complainant ever consented to the registration of Complainant’s mark as a domain name.

 

Respondent was not making a legitimate non-commercial or fair use of the domain name but instead used the domain name to divert customers seeking Avery products to Respondent’s website for commercial gain.

 

Respondent’s choice of <averylabels.com> could only be viewed as an attempt by Respondent to profit from the goodwill of Complainant’s mark by deceiving consumers as to its association with the Complainant.

 

Respondent obtained potential customers who would not otherwise visit Respondent’s website. Consumers were tricked into visiting Respondent’s website and once there Respondent attempted to sell competing products. By attempting to sell it’s own and others products the Respondent was not merely providing a free information service for the benefit of consumers of labels so as to qualify as a “non-commercial” use. If that were the case Respondent could have chosen a neutral name and not adopted Complainant’s trademark.

 

Complainant maintained that Respondent’s registration and use were in bad faith.

 

When Respondent registered the domain name it represented to Namesecured.com, Inc. that it’s registration would not interfere and infringe upon the rights of a third party. At the time of it’s registration Respondent was very familiar with the AVERY brand name. The use of “AVERY” strongly implied that Complainant owned or sponsored the website and it was therefore likely that shoppers would go to the website for label products because of the assumed association with the Complainant. Respondent’s registration end use of the domain name created a likelihood of confusion as to the source, sponsorship, affiliation, and endorsement of it’s website.

 

Consumers were led to believe that Complainant sponsors the products sold on Respondent’s website and therefore were more likely to purchase products. This resulted in Respondent deriving business from the exploitation of Complainant’s trademark.

 

Registration and use of a well-known mark to misdirect traffic to Respondent’s website supported a finding of bad faith. Respondent was using the disputed domain name in the attempt to misdirect potential customers of the Complainant to the Respondent’s website so as to facilitate purchase of Respondent’s products.

 

The current <averylabels.com> website was blank as of August 16, 2001. This would lead consumers to believe that Complainant was no longer in business or was inept in the management of it’s website. This was further evidence of bad faith conduct when considered in the light of Respondent’s other conduct.

 

The Complainant had promoted its “AVERY” mark for labels since 1941. The “AVERY” mark had been expanded to include label related products and other stationary products and subsequently expanded to include computer software for designing and printing labels and finally the mark was expanded to include label-related stationary products.

 

The Complainant was a global leader in the labels manufacturing industry. During the period 1995-2000 net sales of the Complainant’s labels, stationary and related products averaged $1.7 billion annually. Complainant’s labels were distributed worldwide. Complainant possessed approximately 200 manufacturing facilities and sales offices in 42 countries. Complainant owned over 100 registrations for AVERY in 59 countries. Complainant made marketing expenditures for Avery related products of between $7-9 million per year.

 

Respondent was using the domain name as means to compel Complainant to make Respondent an official distributor and by inference had the same bad faith intention at the time it registered the domain name. Respondent used the domain name as an unfair bargaining chip to obtain a distribution agreement with the Complainant. When Complainant refused to make Respondent an official distributor, Respondent refused to cancel or transfer the domain name.

 

Complainant also asserted that Respondent by omitting a street and city portion of its address was attempting to obscure its identity when registering the domain name. This was further evidence of bad faith.

 

In response to Complainant’s efforts to have Respondent cease and desist from using the disputed domain name, Respondent attempted to justify it’s usage of Complainant’s trademark as mutually beneficial since it was seeking an official distributorship agreement with Complainant.

 

Subsequently and without notice to the Complainant, Respondent “framed” Complainant’s website into it’s own and provided an optional link to Respondent’s website. Two weeks later the frame containing the Complainant’s website was removed by Respondent.

 

The Complainant maintained that the disclaimers and links to Complainant’s website did not diminish Respondent’s bad faith intention at the time of registration to use <averylabels.com> website to misdirect traffic to it’s competing website. The continued misdirection of potential customers of Complainant was not remedied by disclaimers and links.

 

B. Respondent

Respondent asserted that <averylabels.com> is not identical or confusingly similar, as the exact phrase is not used in mass marketing efforts or product packaging to promote their label products. Respondent asserted that their intention was not to compete with Complainant but rather to provide a resource site for consumers looking for labels. Respondent did not claim affiliation with Complainant and clearly stated Respondent’s non-affiliation on Respondent’s website. Visitors to the website were provided with the information necessary to make an educated decision as to whether or not they wanted to enter the site to find dealers of Avery brand labels and more. The <averylabels.com> website provided the consumer with links to companies with websites that sell Avery brand labels as well as links to companies who strictly sell other brands. The <averylabels.com> website offered the consumer options. Respondent did not believe in the existence of a company that sold only one brand name of any product. Respondent asserted that it did not profit from any links on it’s website in any way.

 

Respondent asserted that prior to any contact with Respondent or it’s representatives, the domain was directed to wilkdirect.com. The site had links to Complainant’s site as well as other Avery product dealers for each one of Respondent’s laser sheet products on each and every page. It was asserted that consumers always had a choice and were never misled. It was also asserted that the <averylabels.com> site evolved into a resource site, a common occurrence on the World Wide Web.

 

Respondent maintained that it did not have the intention to infringe or otherwise take business away from Complainant but rather to serve a provider of a resource for Avery brand labels and more. Dealers and ultimately Complainant benefited from any and all sales generated by the links at <averylabels.com>. Respondent hoped to serve as an alternate label source for specialty, hard-to-find, custom label and comparable label styles.

 

Respondent asserted that the headline “Welcome to <averylabels.com>, your Internet resource for Avery labels and more” was not misleading. Just below the headline a link to the official Avery Dennison website was provided. The “and more” statement was a reference to links so that consumers could access companies that sell comparable labels. Consumers who visited <averylabels.com> had the choice to go elsewhere before entering the site.

 

Respondent denied that it attempted to create a likelihood of confusion as to the sole sponsorship affiliation and or endorsement of products sold on <averylabels.com>. Confusion was avoided by Respondent’s statement “provided by wilkdirect.com”. This coupled with the disclosure claiming non-affiliation and the fact that Respondent did not sell products at the website eliminated the basis for the argument that it might appear that Complainant somehow endorsed Respondent’s products.

 

Respondent maintained that the blank page episode was an attempt at an intermediate solution in the hope of a compromise with the Complainant. Respondent made attempts to revise the site to satisfy Complainant. All attempts were refused. Ultimately it was concluded that Respondent was not operating in bad faith and had no reason to stay off-line. The site was thereafter updated and put back on-line.

 

Respondent maintained that the Avery name had become well known due to mass marketing efforts on the part of Complainant. Complainant, however, did not market or publicize the phrase “Avery labels”. Respondent asserted that the phrase “Avery labels” was not famous; it was merely a reference that Respondent registered and now owned. Respondent maintained that the proposal of a distributorship in the correspondence was merely an idea/proposal for Complainant to consider. But Complainant’s rejection of the proposal played no role in the decision to keep the domain name. Respondent was attempting to cooperate in the effort to make a working relationship. Respondent indicated to Complainant that Respondent was willing to sell Complainant’s labels exclusively if necessary but Respondent would not agree.

 

Respondent maintained that its initial registration of <averylabels.com> did disclose contact data in its entirety. The information was changed for a valid reason to avoid door-to-door and mail solicitation. The same was done at Respondent’s other website wilkdirect.com.

 

Respondent denied that it ever demanded anything from Complainant or it’s representatives. Respondent’s representative was informed in writing the reason for the delay in changing the frame of Complainant’s website. This was due to the unavailability of the persons responsible for making those changes.

 

Respondent asserted that it felt it had a right to own and use the phrase “Avery labels” since it was not a trademarked phrase. Respondent was not defaming, defacing, or otherwise damaging the Avery name by using the phrase <averylabels.com>; Respondent asserted that they were cooperative, open to negotiation and very interested in becoming a very good distributor for Complainant.

 

C. Complainant’s Additional Submission

Complainant asserted that subsequent changes to the website did not remove bad faith if use had already begun in bad faith, since Respondent might continue to use the domain name in bad faith after the controversy was settled. Various of Respondent’s exhibits did not depict Respondent’s website at the time the dispute arose between the parties.

 

The Complainant maintained that the use by Respondent of <averylabels.com> was in bad faith because the nature of the domain itself inevitably led consumers to believe that the site was authorized by the owner of the AVERY trademark for labels. The disclaimers on the <averylabels.com> site were not effective. The disputed domain name consisted of a trademark and a generic term, which could not be used without misleading the public into believing the domain name, like the trademark belonged to the trademark owner. The domain name was so obviously connected with the Complainant and it’s services and products that it’s use by someone with no connection with the Complainant suggested bad faith. Complainant was not obligated to file multiple trademark applications and corresponding domain names for each individual product sold under the “AVERY” mark in order to protect it’s AVERY name from infringers.

 

Respondent confused “cooperation” with “extortion”. Respondent attempted to use the domain name and website as a means of coercing Complainant into making Respondent an official distributor, something Complainant felt was not in it’s best interest.

 

FINDINGS

1.      The Complainant is the owner of valid and subsisting United States Trademark Registrations for Avery for various types of label products and computer software for designing and printing labels.

2.      The Complainant manufacturers and distributes labels on a worldwide basis.

3.      Respondent registered the domain name <averylabels.com> on January 6, 2000.

4.      Respondent is known by the name “Wilk Enterprises”.

 

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 canceled 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.

 

Identical and/or Confusingly Similar

It was concluded that the disputed domain name <averylabels.com> is confusingly similar to the AVERY trademark. The domain name merely adds the generic word “labels”, a word which describes Complainant’s products. The addition of the generic word to Complainant’s trademark makes the disputed domain confusingly similar to Complainant’s mark. Sunkist Growers, Inc. v. S. G. and DelMonte-Asia.com D2001-0432 (WIPO May 22, 2001). In that case the domain names sunkistgrowers.org sunkistgrowers.net and sunkistasia.com were confusingly similar to Complainant’s registered Sunkist mark and identical to Complainant’s common law Sunkist Growers mark. See also Arthur Guinness Son and Co. (Dublin Ltd. v. Healy/Bosth D-2001-0026 (WIPO Mar. 23, 2001)) which found confusingly similarity where the domain name in dispute contained the identical mark of the Complainant combined with a generic word or term.

 

Rights or Legitimate Interests

After reviewing the materials submitted by the parties the Panel concluded that the Respondent does not have rights or legitimate interests in the disputed domain name <averylabels.com>.

 

Respondent’s assertion that it was free to register the disputed domain name since the name was available is without merit. The Respondent admits “the Avery name has become well-known indeed due to the mass marketing efforts on the part of Avery Dennison Corp.” It was clear that from the time of registration and henceforth, Respondent was aware of the Complainant’s Avery trademark and thus any effort to market Respondent’s products or the products of other label providers could not be considered bona fide within the meaning of Policy 4(c)(i). Respondent owns no trademark registrations under the name “Avery” or “Avery labels” or “averylabels.com”. This suggests the Respondent had not legitimate rights or interest in the domain name. See Ronson Plc v. Unimetal Saynai, D2000-0011 (WIPO Mar. 11, 2000). In that case the lack of a trademark registration in any country for the Ronson mark was sufficient basis for concluding that the Respondent had no legitimate right or interest in the domain name.

 

Respondent conceded that it was not known by the name Avery, rather Respondent does business as Wilk Enterprises.

 

The evidence did not support a finding that Respondent was making a legitimate non-commercial or fair use of the domain name. The assertions that “Avery labels” was a resource that Respondent somehow enhanced and used to provide informational services to the consuming public was without merit. Respondent sought to use Complainant’s well-known trademark in order to capitalize on the name identification associated with Complainant’s mark.

 

Respondent’s offering of goods manufactured by competitors of the Complainant is not a bona fide offering of goods or services pursuant to Policy 4(c)(i). See The Chip Merchant, Inc. v. Blue Star Elec., D-2000-0474 (WIPO Aug. 21, 2000). In that case Respondent’s use of the domain name to sell competing goods was an illegitimate use and not a bona fide offering of goods. See also Kosmea Pty Ltd. v. Krpan, D-2000-0948 (WIPO Oct. 3, 2000). In that case Respondent was found to have no rights in a domain name which was used to divert customers of Complainant’s products to Respondent’s site by using Complainant’s mark.

 

Registration and Use in Bad Faith

The Panel concluded that bad faith registration and use by the Respondent are established by the greater weight of the evidence. It appeared from the evidence that Respondent intentionally attempted to attract for commercial gain Internet users to it’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the <averylabels.com> website. The Respondent, a small to medium sized paper products company appropriated Complainant’s well-known trademark because of the wide association among the consuming public between the trademark and associated goodwill. Internet surfers seeking to find Complainant’s products or services were misleadingly led to conclude that they were visiting a legitimate website affiliated with the Complainant. Once at the site potential customers of the Complainant are offered products of competitors or the Respondent. See Pavilion Agency, Inc. v. Greenhouse Agency, Ltd., D-2000-1221 (WIPO Dec. 4, 2000). In that case it was concluded that the domain names were so obviously connected with Complainant’s trademarks that the use or registration by anyone other than the Complainant suggested opportunistic bad faith. See also Sony Cabushiki Kaisha v. Inja, Kil, D-2000-1409 (WIPO Dec. 9, 2000). In that case bad faith registration and use were found since it was inconceivable that the Respondent could make any active use of the disputed domain name without creating a false impression of association with the Complainant.

 

The Complainant’s use of disclaimer and links to Complainant’s website did not circumvent a finding of bad faith. See Ciccone v. Parisi <Madonna.com>, D-2000-0848 (WIPO Oct. 12, 2000). In that case it was found that the use of a disclaimer on Respondent’s website was insufficient to avoid a finding of bad faith since the disclaimer might be ignored or misunderstood by Internet users and a disclaimer did nothing to dispel initial interest confusion that was inevitable from Respondent’s actions.

 

DECISION

For the foregoing reasons, the Panel concluded that the domain name registered by the Respondent is identical or confusingly similar to the trademark and service mark in which Complainant has rights and that the Respondent has no rights or legitimate interests in respect to the domain name and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain <averylabels.com> be transferred to the Complainant.

 

 

James Alan Crary, Panelist

 

Dated: October 22, 2001

 

 

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