DECISION

Avery Dennison Corporation v. Texas Internet

Claim Number:  FA0402000235715

PARTIES

Complainant is Avery Dennison Corporation (“Complainant”) represented by David J. Steele Esq., of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is Texas Internet (“Respondent”),  8730 International Parkway #41, Dallas, TX 75081.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <averydenison.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

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.

Hon. Ralph Yachnin,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 4, 2004; the Forum received a hard copy of the Complaint on February 4, 2004.

On February 5, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <averydenison.com> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 February 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 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@averydenison.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 March 11, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 <averydenison.com> domain name is confusingly similar to Complainant’s AVERY DENNISON mark.

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

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

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

FINDINGS

Avery Dennison Corporation, Complainant, is a global leader in pressure-sensitive technology and innovative self-adhesive solutions for consumer products and label materials in the United States, and around the world.  Complainant has used the AVERY DENNISON mark for its extensive offering of labels and stationery merchandise since at least as early as 1998.  Complainant is also the holder of Registration No. 2,600,895 (registered on July 30, 2002) with the United States Patent and Trademark Office (“USPTO”) for its AVERY DENNISON mark.

Complainant reaches hundreds of thousands of customers via its mail order catalogs and its website which is located at the <averydennison.com> domain name.  The goodwill that Complainant has established in its AVERY DENNISON mark is evidenced by Complainant’s product sales which have totaled approximately $4 billion in each of the last three years.

Respondent registered the <averydenison.com> domain name on March 8, 2000.  Respondent is using the domain name to direct Internet users to its “Internet Searchlight” website that displays banner advertisements.  In addition to other advertisements, Respondent’s website displays a pop-up advertisement offering links to other websites that sell Complainant’s AVERY DENNISON products. 

Respondent is not known individually, as a business, or in any other manner by the <averydenison.com> domain name.  Furthermore, Respondent has no affiliation or relationship with Complainant.

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 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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the AVERY DENNISON mark through registration with the USPTO.  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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent registered the <averydenison.com> domain name, which is identical to Complainant’s mark, except Respondent omitted the second letter “n” in Complainant’s AVERY DENNISON mark.  Such a common typographical error is not sufficient to distinguish Respondent’s domain name from Complainant’s mark.  Thus, the Panel concludes that the <averydenison.com> domain name is confusingly similar to the AVERY DENNISON mark.  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).  

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to present any evidence to the Panel demonstrating that it has rights or legitimate interests in the <averydenison.com> domain name.  Thus, the Panel may accept Complainant’s unrebutted allegations as true.  Consequently, the Panel presumes that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent is not affiliated with Complainant and Respondent does not have any type of relationship with Complainant.  Since there is no evidence before the Panel suggesting that Respondent, as an individual, a business, or in any other manner, is commonly known by the <averydenison.com> domain name, the Panel concludes that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

Respondent is using the <averydenison.com> domain name to direct unsuspecting Internet users, who are looking for Complainant’s website and mistakenly misspell Complainant’s mark, to Respondent’s website, which displays banner advertisements.  Taking advantage of common typographical errors by causing unknowing Internet users to be diverted to websites featuring banner advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  Thus, the Panel finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).   See Tercent Inc. v.  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 Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain name with the intention of attracting Internet users, who misspell or mistype Complainant’s mark while attempting to reach Complainant’s website, to its own website that is wholly unrelated to Complainant.  It can be inferred that Respondent financially benefits by directing Internet users to its advertising website since it is likely that Respondent receives a portion of the advertising revenue.  Since Respondent is using the domain name for commercial gain and creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, the Panel concludes that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).   

Furthermore, Respondent engaged in typosquatting when it registered the <averydenison.com> domain name to ensnare Internet users who are searching for Complainant’s website but inadvertently misspell the mark.  Registration of a domain name with a common typographical error in order to direct Internet users to a website, unrelated to the site they are actually searching for, is evidence of typosquatting.  Panels have consistently held that typosquatting is a prima facie case of bad faith under the Policy.  Moreover, the fact that Respondent registered a typosquatted version of Complainant’s mark and the website hosts a pop-up advertisement offering links to other websites that sell Complainant’s AVERY DENNISON products make it very difficult for Respondent to prove that it did not have actual knowledge of Complainant’s rights in the AVERY DENNISON mark when it registered the domain name.  Thus, the Panel finds that Respondent registered and used the <averydenison.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: March 19, 2004

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