DECISION

Avery Dennison Corporation v. Ray Steele d/b/a Mercian Labels Ltd. and selfadhesivelabels.com

Claim Number: FA0211000133626

PARTIES

Complainant is Avery Dennison Corporation, Pasadena, CA, USA (“Complainant”) represented by Michael K. Bosworth, of Oppenheimer, Wolff & Donnelly LLP.  Respondent is Ray Steele d/b/a Mercia Labels, LTD. and selfadhesivelabels.com Sutton Coldfield, UNITED KINGDOM (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <averylabels.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 13, 2002; the Forum received a hard copy of the Complaint on November 18, 2002.

On November 13, 2002, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <averylabels.com> is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 November 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 9, 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@averylabels.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 December 23, 2002, 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <averylabels.com> domain name is confusingly similar to Complainant’s registered AVERY mark.

2. Respondent does not have any rights or legitimate interests in the <averylabels.com> domain name.

3. Respondent registered and used the <averylabels.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Avery Dennison Corp., holds numerous international trademarks reflecting its AVERY family of marks. More specifically, Complainant holds the following registrations, listed without limitation:

· AVERY: UK Reg. No. 856,329 for labels and materials for the manufacture thereof; labeling machines, imprinting machines, label dispensers and label applicators, all for office use.

· AVERY: UK Reg. No. 1,552,971 for labels and materials for the manufacture thereof; label dispensers and label applicators, all for office use; diver sheets for labeling the contents of binders.

· AVERY SUPERCLEAR: UK Reg. No. 1,112,703 for translucent or transparent labels and materials for the manufacture thereof.

· AVERY: U.S. Reg. No. 758,123 for unprinted labels and blank label stock, registered in 1963 and first used in 1941.

· AVERY: U.S. Reg. No. 2,178,789 for, inter alia, highlighting markers and marking pens; hanging file binders; report covers; transparent-plastic binder pages for holding and displaying trading cards, business cards, and photographs.

Complainant is a manufacturer of labels, which are marketed and sold internationally. Complainant, through its predecessor company, holds five United Kingdom registrations and five U.S. Patent and Trademark Office registrations for labels and label-related goods. Complainant has promoted its labels and label-related goods under the AVERY trademark since 1941, and has established significant goodwill and secondary source identity in the industry by way of its AVERY mark.

Respondent registered the <averylabels.com> domain name on April 29, 2002. Complainant’s investigation of Respondent reveals that Respondent is a specialized paper manufacturer and allegedly buys and resells labels of competing label manufacturers. When Internet users key the disputed domain name into the Internet browser they are directed to Respondent’s <mercianlabels.com> domain name and corresponding website. Respondent’s website indicates that it supplies Complainant’s AVERY products. For example, one prominent webpage asks “are you looking for a UK supplier of AVERY type LASER LABELS AND INK JET LABELS?,” and further states “LOOK NO FURTHER FOR YOUR AVERY LASER LABELS AND INKJET LABELS.” However, Respondent does not actually offer Complainant’s products for sale on its website.

Respondent is not authorized or licensed to use Complainant’s AVERY mark in any fashion.

DISCUSSION

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 the 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 the 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.

Identical and/or Confusingly Similar

Complainant has established rights in the AVERY mark through registration with the relevant trademark authorities in the United Kingdom and the United States, and subsequent continuous use of the mark in commerce.

Respondent’s <averylabels.com> domain name is confusingly similar to Complainant’s AVERY mark. Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds the term “labels,” a word that defines one of Complainant’s products. The addition of an industry-related word to a second-level domain name increases the likelihood of confusion among Internet users. Respondent’s use of a word that describes the mark that is incorporated in the domain name renders the subject domain name confusingly similar under a Policy ¶ 4(a)(i) analysis. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Furthermore, the addition of a generic top-level domain is inconsequential when considering whether a domain name is confusingly similar or identical to a mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant).

The Panel finds that Respondent’s <averylabels.com> domain name is confusingly similar to Complainant’s mark and thus Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In failing to submit a Response, Respondent has failed to assert circumstances that may establish rights or legitimate interests in <averylabels.com>. Complainant’s submission of a prima facie case to the Panel effectively shifts the burden to Respondent. Respondent’s failure to contest Complainant’s assertions allows the Panel to accept all of Complainant’s reasonable inferences as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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 in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Complainant’s uncontested evidence indicates that Respondent is advertising and selling competing products under the AVERY mark without Complainant’s approval. Additionally, Respondent uses the infringing domain name to acquire Internet users’ initial interest and subsequently diverts them to its <mercianlabels.com> website, where Respondent offers the products of Complainant’s competitors. Respondent’s use of Complainant’s mark to divert interested Internet users to competitors’ products does not constitute a bona fide use of the domain name under Policy ¶ 4(c)(i). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

Complainant’s evidence indicates that Respondent does not hold a trademark registration for AVERYLABELS.COM, or any variation thereof. Respondent is known by “Mercian Labels Ltd.” and “selfadhesivelabels.com.” Respondent’s website and contacts indicate that Mercian Labels Ltd. is the owner of the website. Significantly, no evidence suggests that Respondent is commonly known as <averylabels.com> or AVERYLABELS. Additionally, Respondent is not authorized to make use of Complainant’s AVERY mark for any purpose or in connection with the distribution of competing products to the public. Therefore, Respondent fails to establish rights in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Evidence indicates that Respondent is profiting from the use of Complainant’s mark, therefore Policy ¶ 4(c)(iii)’s “noncommercial or fair use” criteria are inapplicable. Once Internet users key the disputed domain name into the browser they are redirected to Respondent’s commercial website. Respondent is operating under the perception that Complainant has authorized and endorsed its <mercianlabels.com> business, which Complainant has not done; thus, Respondent’s deception fails to establish rights or legitimate interests in the domain name. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <averylabels.com> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

By registering and using the <averylabels.com> domain name, Respondent intends to deceive the public into believing that they could purchase AVERY brand labels on Respondent’s website. As stated, Respondent does not actually sell Complainant’s AVERY labels. Respondent sells its own specially manufacture products and products of Complainant’s competitors. Respondent opportunistically uses Complainant’s AVERY mark to generate awareness in products that are contrary to Complainant’s interests. Respondent’s commercial endeavor profits from the diversionary use of the domain name. Such activity represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Finding otherwise would allow Respondent to continually prosper from the initial interest generated from the unauthorized use of Complainant’s mark. 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 Kmart v. Kahn, 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)).

Accordingly, the Panel finds that Respondent registered the <averylabels.com> domain name in bad faith; thus, Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief should be hereby GRANTED.

Accordingly, it is Ordered that the <averylabels.com> domain name be TRANSFERRED from Respondent to Complainant.

 Honorable Paul A. Dorf (Ret.) Panelist

Dated:  January 10, 2003

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