DECISION

Avery Dennison Corporation v. American Label & Tag, Inc.

Claim Number:  FA0404000250769

PARTIES

Complainant is Avery Dennison Corporation (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale, LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660.  Respondent is American Label & Tag, Inc. (“Respondent”), 41878 Koppernick, Canton, MI 48187.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <averylabelandtag.com>, registered with 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 5, 2004; the Forum received a hard copy of the Complaint on April 6, 2004.

On April 7, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <averylabelandtag.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the 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 April 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@averylabelandtag.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 May 19, 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 <averylabelandtag.com> domain name is confusingly similar to Complainant’s AVERY mark.

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

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

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

FINDINGS

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 trademark in connection with its offering of a variety of goods, including labels, tags, and stationary merchandise, since as early as 1988. According to Complainant, its sales have reached approximately $4 billion each of the last three years.

Complainant owns multiple registrations with the United States Patent and Trademark Office (“USPTO”), including registration numbers 2,009,493 (issued Oct.22, 1996) and 2,178,789 (issued Aug. 4, 1998).

Complainant also operates a website located at the domain name <avery.com>.

Respondent registered the disputed domain name on October 10, 2002.  Respondent uses the domain name to redirect Internet users to a website located at <americanlabel.com>, which sells custom labels, tags, decals, and nameplates.

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

Complainant has established rights in the AVERY mark as a result of its multiple registrations with the USPTO.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).

The disputed domain name <averylabelandtag.com> contains Complainant’s AVERY mark and merely has added the descriptive terms “label and tag,” which describes the goods offered by Complainant under the AVERY mark.  Consistent with prior decisions under the Policy, the Panel finds that such additions that merely describe Complainant’s business fail to sufficiently distinguish the domain name from Complainant’s mark.  See Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also 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 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); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Through Respondent’s failure to respond to the Complaint, the Panel may find that Respondent lacks rights and legitimate interests.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

The evidence in the record fails to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The fact that Respondent uses the domain name to redirect Internet users to a website located at <americanlabel.com> is further evidence that Respondent is not commonly known by the domain name <averylabelandtag.com>.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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 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").

Furthermore, Respondent has registered a domain name confusingly similar to Complainant’s mark and is using the domain name to sell goods that compete with Complainant’s goods offered under the AVERY mark.  Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant and Respondent both engage in the sale of labels and tags.  As such, it is reasonable to describe the relationship between Complainant and Respondent as one of competition.  The fact that a competitor registers the domain name of its competitor is sufficient under Policy ¶ 4(b)(iii) to evidence bad faith registration and use because such registration is done primarily for the purpose of disrupting the business of a competitor. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Furthermore, Respondent’s registration of a domain name confusingly similar to its competitor’s mark, which has been used to attract Internet users to its website located at the <amercianlabels.com> domain name, is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).  It is apparent that Respondent’s resolved website is operated for the purpose of commercial gain and Respondent attracted Internet users to the website by creating a likelihood of confusion with Complainant’s mark.  Therefore, Respondent’s registration and use satisfies the requirements set forth in Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Complainant has established Policy ¶ 4(a)(iii).

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 <averylabelandtag.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  June 2, 2004

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