Avery Dennison Loses Domain Name Dispute

In the case of Avery Dennison Corporation v. Dennison-Hesperia S.A., the Panel determined that: (1) Complainant had rights in the DENNISON mark; (2) that the domain name dennison-herperia.com was confusingly similar to the mark; (3) that Respondent had rights or legitimate interests in the domain name; (4) that the domain name was not registered in bad faith; and (5) Complainant did not engage in reverse domain name hijacking.

The Panel first found that Complainant Avery Dennison, the famous manufacturer of paper products and office supplies, had established, through its ownership of registrations for, and use of, the DENNISON mark, rights in the mark. The Panel further concluded that the disputed domain name dennison-hesperia.com was confusingly similar to the DENNISON mark. The parties disputed whether the term “hesperia” was geographically descriptive and, thus, of weak trademark significance absent proof of secondary meaning. However, even if, as Respondent contended, “Hesperia” was not an actual geographical term, the Panel noted that the term “dennison” constitutes the first and, thus, dominant portion of the domain name and that the domain name incorporated Complainant’s mark in its entirety.

The Panel further concluded that Respondent had rights or legitimate interests in the domain name. The evidence established that Complainant’s predecessor in interest, in 1990, authorized Respondent’s predecessor in interest to register and use the DENNISON name in Spain and that Respondent obtained a registration for the DENNISON mark in Spain prior to its registration of the disputed domain name. The evidence also indicated that Respondent had been using the corporate and trade name Dennison-Hesperia S.A. since 1996, following 40 years of use of the trade name Manufacturas Hesperia by Respondent’s predecessor in interest. Under such circumstances, the Panel found that Respondent was using the domain name in connection with a bona fide offering of goods and services before any notice of the dispute, within the meaning of paragraph 4(c)(i) of the Policy.

Given the determination that Respondent registered the domain name during a period of time when it was authorized by Complainant to register and use the DENNISON mark in Spain, the Panel concluded that the domain name was not registered in bad faith.

Accordingly, the Complainant Avery Dennison's claim was denied.