DECISION

Avery Dennison Corporation v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0406000289048

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 Horoshiy, Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, #518, Curacao, AN. 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <averydesignpro.com> and <averyprint.com>, registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 June 22, 2004; the Forum received a hard copy of the Complaint on June 23, 2004.

On June 24, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to the Forum that the domain names <averydesignpro.com> and <averyprint.com> are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a Dotregistrar.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 June 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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@averydesignpro.comand postmaster@averyprint.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 July 23, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <averydesignpro.com> and <averyprint.com> domain names are confusingly similar to Complainant’s AVERY and DESIGNPRO marks.

2. Respondent does not have any rights or legitimate interests in the <averydesignpro.com> and <averyprint.com> domain names.

3. Respondent registered and used the <averydesignpro.com> and <averyprint.com> domain names in bad faith.

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

FINDINGS

Complainant, Avery Dennison Corporation, is a global leader in pressure-sensitive technology, innovative self-adhesive solutions for consumer products, label materials and computer software in the United States and around the world. 

Complainant holds trademark registrations with the United States Patent and Trademark Office for the AVERY mark (Reg. No. 2,009,493 issued October 22, 1996 and Reg. No. 2,178,789 issued August 4, 1998) and for the DESIGNPRO mark (Reg. No. 2,611,215 issued August 27, 2002). 

Complainant began using the AVERY and DESIGNPRO marks as early as 1998 in connection with labels and stationary merchandise.  Additionally, Complainant also offers a wide range of computer software for designing and printing labels under these marks.  For each of the last three years, Complainant’s sales have approximated $4 billion.

Complainant operates its main website at the <averydennison.com> domain name.

Respondent registered the <averydesignpro.com> and <averyprint.com> domain names on March 11 and 12, 2004, respectively.  Respondent is using the domain names to redirect Internet users to a website that features advertising for a variety of services and hosts a search engine to link viewers to a variety of websites, predominantly including sites that offer Complainant’s office products and similar products.   

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 that it has rights in the AVERY and DESIGNPRO marks through registrations with the United States Patent and Trademark Office and through continued use of its marks in commerce over the last six years.  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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction.).

Respondent’s domain name is confusingly similar to Complainant’s AVERY and DESIGNPRO marks.  The <averydesignpro.com> domain name is confusingly similar because the domain name incorporates Complainant’s marks and only deviates with a combination of the marks.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”).

Respondent’s <averyprint.com> domain name is also confusingly similar to Complainant’s AVERY mark because the domain name incorporates Complainant’s mark in its entirety and merely adds the generic or descriptive term, “print.”  The addtion of a generic or descriptive term to Complainant’s mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark “LLBEAN” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names that contain in their entirety, one or both of Complainant’s marks.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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 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).

Moreover, where Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Respondent is using the <averydesignpro.com> and <averyprint.com> domain names to redirect Internet users to a website that features advertising for a variety of services and hosts a search engine to link viewers to a variety of websites, including sites that offer the same and similar types of products that Complainant offers online.  Respondent’s use of domain names that are confusingly similar to Complainant’s AVERY and DESIGNPRO marks to redirect Internet users interested in Complainant’s products to a commercial website that offers a search engine unrelated to Complainant’s products and services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("[U]se of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use."); see also Tercent Inc. v. Lee 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).     

Furthermore, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <averydesignpro.com> and <averyprint.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

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

Registration and Use in Bad Faith

Respondent intentionally registered the disputed domain names that contain Complainant’s marks for Respondent’s commercial gain.  Respondent’s domain names divert Internet users seeking Complainant’s services to Respondent’s commercial websites through the use of domain names that are confusingly similar to Complainant’s marks.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s AVERY and DESIGNPRO marks.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  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 Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Kmart v. Khan, 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)).

Respondent is using the <averydesignpro.com> and <averyprint.com> domain names to redirect Internet users to a search engine that provides links to a variety of websites, predominantly including sites that offer Complainant’s and similar office products and labels.  Complainant’s business also offers office products and labels.  The Panel finds that, by creating confusion around Complainant’s marks, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s marks to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant); see also 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).

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 <averydesignpro.com> and <averyprint.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  August 2, 2004

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