CCL Label, Inc. v. Roy Harris / Electronic Express Inc.
Claim Number: FA1608001690438
Complainant is CCL Label, Inc. (“Complainant”), represented by Matthew J. Cavanagh of McDonald Hopkins LLC, Ohio, USA. Respondent is Roy Harris / Electronic Express Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <averylabel.net>, registered with GoDaddy.com, LLC.
Each undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.
Richard W. Hill, David H. Bernstein, and Paul M. DeCicco as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 23, 2016; the Forum received payment on August 24, 2016.
On August 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <averylabel.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@averylabel.net. Also on August 24, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 25, 2016.
On September 7, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Richard W. Hill, David H. Bernstein, and Paul M. DeCicco as Panelists.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant bases its Complaint on the AVERY mark, which it uses in commerce in connection with unprinted labels and blank label stock. Complainant has registered the AVERY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 758,123, registered Oct. 8, 1963), which demonstrates rights in the mark. Respondent’s <averylabel.net> domain name is confusingly similar to the AVERY mark because it incorporates the mark fully and merely adds the descriptive term “label” and the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in or to the disputed domain. Respondent is not affiliated with Complainant, Complainant has not given Respondent permission to incorporate its mark in domain registrations, and Respondent is not commonly known by the disputed domain. Further, Respondent’s offering through the disputed domain cannot be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent hosts a website that offers printer labels that directly compete with Complainant—boasting that its labels are “compatible” with “Avery” labels.
Respondent has registered and used the disputed domain in bad faith. First, the disruptive and competing use through which Respondent profits indicates bad faith registration and use as per Policy ¶¶ 4(b)(iii) and (iv). In addition, Respondent had actual knowledge of Complainant when registering and subsequently using the disputed domain as evidence by the inclusion of the entire AVERY mark in the domain coupled with Respondent’s suggestion on the resolving website that its labels are “compatible” with “Avery” labels, referring to Complainant.
B. Respondent
Respondent contends as follows:
Complainant does not own the trademark for AVERY because it is owned by its predecessors “Avery Dennison Corporation.” Complainant has also not shown common law rights in the AVERY mark. AVERY is a dictionary term.
Respondent has manufactured and sold Inkjet and Laser Label Sheets for more than 30 years. Respondent has invested significant time, money, and effort in promoting American made label sheets. Respondent competes with Complainant, and describes its label sheets as “Brand Name Comparable” demonstrating that it sells its labels in a competitive setting. Respondent has removed all references to Complainant on its site. Respondent’s <averylabel.net> domain name redirects Internet users to <uslabel.net>, which saves Respondent marketing costs.
Respondent further alleges that Complainant is violating anti-trust law and has filed complaints with the relevant authorities.
Complainant has rights in the AVERY mark by virtue of an assignment of the mark from the original owner, and the registration of such mark and the recordal of its assignment with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent’s <averylabel.net> domain name is used to address a website offering printer labels that directly complete with Complainant.
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."
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the AVERY mark by owning a USPTO registration for such mark with the USPTO. Respondent admits to Complainant’s ownership by stating in its Response that Avery Dennison Corporation owned the mark and that Avery Dennison Corporation is Complainant’s predecessor in interest. Furthermore, according to the publicly-available trademark assignment records available on the USPTO website, Complainant is listed as the owner of U.S. Reg. No. 758,123 for AVERY for “unprinted labels and blank label stock” by virtue of an assignment from Avery Dennison Corp. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that complainant’s registration with the USPTO adequately proves its rights under Policy ¶ 4(a)(i).).
Respondent’s domain name incorporates Complainant’s AVERY mark in its entirety, adds the descriptive term “label” and appends the top-level domain name “.net” appended thereto. The slight differences between the Complainant’s trademark and Respondent’s domain name are insufficient to distinguish one from the other for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel finds that the <averylabel.net> domain name is confusingly similar to Complainant’s AVERY trademark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).); see also Arla Foods amba v. G. La Porta / yoyo.email, Case No. D2014-0855 (WIPO Aug. 23, 2014) (“Although top-level domains may be considered when appropriate in assessing identically or similarity, they may also be disregarded (as has traditionally been the case) for purposes of determining whether the second-level domain is identical or confusingly similar to the trademark at issue.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden of production shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). The burden of proof, however, remains on the Complainant. See Billy Bob's Texas IP Holding LLC v. Domain Administrator, Name Administration Inc. (BVI), Case No. D2016-1221 (WIPO Aug. 9,. 2016). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not affiliated with Complainant or authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Roy Harris / Electronic Express Inc.” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <averylabel.net> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to direct internet users to a website which offers products (printer labels) that are in direct competition with those offered by Complainant. Using the confusingly similar domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). That Respondent claims to sell labels that are comparable or compatible to AVERY brand labels does not give Respondent the right to use the AVERY trademark to promote competing goods in this confusing way. For example, the Respondent’s websites have, in the past, resolved to a “uslabel.net” website that offered many printer labels without making clear that the website was not affiliated with the AVERY brand and was not selling AVERY brand labels. See Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001).
The Panel does not consider Respondent’s arguments regarding alleged anti-trust violations by Complainant to be relevant for the present proceedings. Whether Complainant has or has not committed antitrust violations is irrelevant to the issue of whether Respondent has rights to or a legitimate interest in the domain name at issue.
The domain name was registered and used in bad faith. As discussed below, circumstances are present under Policy ¶ 4(b) and otherwise which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, and as mentioned above regarding rights and interests, Respondent uses the <averylabel.net> domain name to confusingly promote products that compete with those offered by Complainant. This disruptive and competitive use of the domain name demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the confusingly similar <averylabel.net> domain name knowing that Complainant had trademark rights in the AVERY mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the use of the entire mark in Respondent’s domain name, and from the content of the website addressed by the domain name which makes claims that Respondent’s labels are “compatible” with “Avery” labels. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <averylabel.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name” and used the domain name to market goods and services in direct competition with Complainant); see also, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration” and used the domain name to offer competing directory services). The Panel rejects Respondent’s suggestion that AVERY is a dictionary term and is therefore available for Respondent’s use; Respondent has not adduced any evidence that “avery” is a dictionary term or that it is a generic term for printer labels.
As already noted, the Panel does not consider Respondent’s arguments regarding alleged anti-trust violations by Complainant to be relevant for the present proceedings.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <averylabel.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard W. Hill, Panelist
David H. Bernstein, Panelist
Paul M. DeCicco, Panelist/Chair
Dated: September 15, 2016
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