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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Avery Dennison Corporation v. Brian
Wick a/k/a Defaultdata.com
Claim Number: FA0205000113288
PARTIES
Complainant is
Avery Dennison Corporation, Brea, CA (“Complainant”) represented by Michael K.
Bosworth, of 1400 Page Mill Road.
Respondent is Brian Wick a/k/a Defaultdata.com, Denver, CO
(“Respondent”), pro se.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <avery-dennison.com>,
registered with Verisign – Network Solutions, 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.
Rudolph J. Gerber as Panelist.
PROCEDURAL HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (“the Forum”) electronically on
May 7, 2002; the Forum received
a hard copy on May 10, 2002.
On May 10, 2002,
Verisign – Network Solutions, Inc. confirmed by e-mail to the Forum that the
domain name above is registered with
Verisign – Network Solutions, Inc. and
that the Respondent is the current registrant of the domain name. Verisign – Network Solutions, Inc. has
verified that Respondent is bound by the Verisign – Network Solutions, 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 June 6, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting
a deadline of June 4, 2002 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@avery-dennison.com
by e-mail.
A timely Response
dated June 4, 2002 was received and determined to be complete on June 7, 2002.
On June 20, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed the
above Rudolph J. Gerber as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name at issue be transferred from Respondent to
Complainant; Respondent argues against such transfer
and seeks dismissal.
PARTIES’ CONTENTIONS
A.
Complainant.
Complainant
alleges that the domain name in question is identical or confusingly similar to
the trademark name in which Complainant
has prior rights, that Respondent has
no rights or legitimate interests in this domain name, that Respondent is not
known by this
domain name, is not making a legitimate or fair use of this
domain name, and registered and is using this domain name in bad faith.
Complainant
asserts that Respondent has no business connections with Complainant and has no
consent to register Complainant’s mark
as a domain name. Furthermore, Complainant asserts that
Respondent is not incorporated or doing business as “Avery-Dennison” and
therefore has no legitimate
right or interest in such a domain name.
Complainant
also asserts that Respondent’s choice of this domain name reflects an attempt
on his part to divert customers of Avery
Dennison by deceiving them.
Complainant
also asserts that the Respondent has a pattern of conduct in registering domain
names for the purpose of selling them
to others for more than the cost of
acquisition. Complainant lists a series
of eight similar cases dealing with Respondent’s use of related domain names
similar to registered names
of major American businesses. Complainant also asserts that Respondent
owns some 3,666 domain names, with 2,290 of them merely incorporating a hyphen
as the sole
difference. Complainant
concludes by asserting that such behavior on the part of Respondent shows a
pattern of bad faith.
B.
Respondent.
Respondent
denies the allegations above and asserts a rightful use of the domain name in
question by citing from his numerous lawsuits
and other Internet activities in
which he has been involved as a result of similar use of other trade names.
He
also asserts repeatedly that Internet trade name restrictions violate the
United States Constitution and in particular his right to free speech.
Respondent
admits having reserved “hundreds” of Internet addresses similar to the trade
names of large, well-known American companies
and firms. He asserts on page 10 of his Response that
one of his intentions has been “to mess with big business.”
Nonetheless,
while admitting that the domain name in question is identical or confusingly
similar to Complainant’s business name,
Respondent nonetheless asserts a lack
of bad faith based on his stated subjective good intentions to exercise, among
other things,
his constitutional right to free speech.
FINDINGS
For the reasons
given below, the domain name <avery-dennison.com> is ordered
transferred to Complainant.
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 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 to the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Identical
and/or Confusingly Similar
The
domain name in question is identical with Complainant’s business name, dating
from at least 1990. The domain name in
question is identical except for the hyphen.
Mere use of a hyphen is insufficient to avoid the conclusion of
rendering the domain name identical. On
page 16 of his Response, Respondent admits that he does not dispute the fact
that the domain name in question is identical and/or
confusingly similar to
Complainant’s trade name.
Accordingly,
based on the facts as well as on Respondent’s admission, Complainant has
established this element.
Rights
or Legitimate Interests
Complainant
has registered and used the trade name in question from at least 1990. It is the official name of its business and
is so identified in the general public without, however, the use of a hyphen. Respondent has no identity with
Complainant’s business, nor with any business purporting to be described by
this same name and is
not commonly known by the domain name. Respondent makes no legitimate noncommercial
or fair use of this name.
Given
the fact that Complainant has registered and used the Avery Dennison trade name
to identify its legitimate business enterprises
from at least 1990, coupled
with the fact that Respondent is not using the domain name for any bona fide
offering of goods and services,
and that the sole difference between the two
versions of the name in question consists of a hyphen, it appears that
Respondent has
no rights or legitimate interests in the use of the domain name <avery-dennison.com.>.
Complainant
has established this element.
Registration
and Use in Bad Faith
Bad
faith registration and usage is amply demonstrated by Respondent’s own Response
admitting substantial legal and Internet involvement
on his part in improper
use of many other well-recognized and registered proprietary names, including
but not limited to Morrison
& Foerster, Morrison Hecker.com, Ralph Lauren,
and many others, notably those listed at the bottom of page 6 of the Complaint,
which indicates transfer of at least ten of his claimed domain names following
litigation.
Furthermore,
bad faith registration on the part of a Respondent can be inferred from using a
mere hyphen as a device to obtain a domain
name identical to claimant’s service
mark, See America Networks Inc. v. Tariq
Masood and Solo Signs, WIPO D2000-0131.
See also CBS Broadcasting Inc. v.
LA-Twilight-Zone, WIPO D2000-0397 (finding bad faith by a respondent in
using a recognized trade name for no business purposes but only as a means
of
harassing and possibly defrauding the complainant).
Bad
faith use is also independently established through Respondent’s own legally
unfounded assertions about his Internet activities
and his desire to “mess
with” large businesses.
Claimant
has amply established this element.
DECISION
Based on the
foregoing Respondent’s use of the domain name in question is cancelled and the
name <avery-dennison.com> is ordered transferred to
Complainant.
Hon. Rudolph J. Gerber
Arbitrator/Panelist
Dated:
July 29, 2002
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