WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Avon Products, Inc. v. Mary Ultes Case No. D2009-0471 1. The Parties
Complainant is Avon Products, Inc. of New York, New York, United States of America, represented by the law firm Kilpatrick Stockton LLP, United States.
Respondent is Mary Ultes, Las Cruces, New Mexico, United States, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2009. On April 14, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 16, 2009, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 17, 2009, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint to conform to that information. Complainant filed an amended Complaint on April 23, 2009. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2009. The Response was filed with the Center on May 14, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 20, 2009. The Panel finds that it was properly constituted and has jurisdiction to decide this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Founded over a century ago, Complainant is now the world's largest direct seller of cosmetics and related beauty products, and it ranks among the largest beauty companies in the world. Complainant's products are sold in over 100 countries, generating more than USD10 billion annually in revenue. Complainant owns approximately 35 federal trademark registrations in the United States and since 1929 has continually used its marks to identify its various brands of beauty products. Among its marks registered in the United States Patent and Trademark Office (“USPTO”) are AVON, AVON MOISTURE THERAPY, AVON NATURALS, AVON WELLNESS, and myriad others. In addition to its United States trademarks, Complainant also owns over 4,000 trademark registrations in over 118 other countries. The AVON mark is world-famous.
Complainant engages in Internet advertising and sales, and it owns a number of Internet domain names that include its AVON mark, including, for example, , , and . The web sites at these domain names promote and offer for sale Complainant's goods and services and also provide web users with information about Complainant's products and activities. In particular, Complainant has used the designation “start.“in connection with promotions to recruit prospective independent sales representatives to sell its array of products.
Respondent registered the disputed domain name in January 2007 using a credit card registered to her daughter. Initially the disputed domain name was registered under the name “Avon L.T.D.” using a Las Vegas, Nevada, United States address and telephone number and an email address of “Avonbusinessowner@.” In February or March 2009 Respondent placed the disputed domain name under an identity shield provided by PrivacyP.
Respondent's daughter was until recently an independent sales representative for Complainant. For a time Respondent's domain name redirected those who accessed the site to “www.start.,” a web site operated by Complainant for recruiting new independent sales representatives referred to the company by Complainant's current representatives. Though the parties differ on the specific details of Complainant's recruitment referral scheme, the parties agree that Complainant pays commissions to its current sales representatives when they recruit new sales representatives once the new representatives begin selling AVON products at a specified level. In order for an existing sales representative to receive proper credit for recruitment referrals, the new representative, upon enrollment, must enter the existing representative's special referral code.
Initially Complainant believed it owned the disputed domain name and began instructing its representatives to use it for their own recruitment referrals. Following discovery that it did not in fact own the disputed domain name, Complainant attempted to contact the domain name owner. Because the contact information was incorrect and later because Respondent used a privacy service, Complainant was unable to contact Respondent until mid-April 2009. In that correspondence Complainant advanced, many of the same arguments asserted in this proceeding, and requested that Respondent cease all further use of the disputed domain name incorporating Complainant's marks and transfer the disputed domain name to Complainant. Complainant also immediately instructed its sales representatives to discontinue use of the disputed domain name in their recruitment materials.
In her email reply to Complainant, Respondent refused to transfer, asserting her belief that her ownership of the disputed domain name was lawful and expressing her frustration with Complainant's initial mistaken belief that it owned the domain name. Respondent also invited Complainant to make an offer to purchase the disputed domain name. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
Complainant has USPTO-registered marks that contain as their dominant feature the word AVON, and because the disputed domain name also contains Complainant's mark in its entirety, confusion is near certain. Under established Policy precedent, the addition of the generic word “start” cannot save Respondent because adding common words to an enforceable mark falls short of preventing confusion. Because the additional word chosen by Respondent relates to or hints at recruitment and marketing campaigns directly associated with Complainant, the possibility of confusion only increases.
Because Complainant's AVON marks are widely known and recognized, and because Complainant has never authorized Respondent to own or use any domain name containing Complainant's marks, established Policy precedent provides that Respondent has no rights or legitimate interests in the disputed domain name. Respondent used Complainant's mark to benefit her daughter by allowing her to generate referral commissions in a manner that circumvented Complainant's clear referral policies. Such a scheme is commercial in nature and does not constitute a legitimate interest. Respondent's original use of an incorrect address and the fictitious “Avon L.T.D.” registration name further proves that Respondent lacks rights or legitimate interests in the domain name and also evidences Respondent's bad faith. Sponsored advertising and links placed at the disputed domain name which allows Respondent to promote goods and services unrelated to Complainant and to trade upon the goodwill associated with Complainant and its marks likewise demonstrate Respondent lacks any rights or legitimate interests in the domain name.
Respondent's registration and use of the disputed domain name have been in bad faith because Respondent and her daughter are reaping commercial gain and benefiting from (1) the goodwill and fame associated with Complainant's marks and (2) the likelihood that unwitting Internet users will mistakenly believe the domain name and its associated web site are affiliated with Complainant. The disputed domain name completely incorporates Complainant's AVON mark which, under Policy precedent, evidences bad faith registration and use. Complainant points to Respondent's admission that for a time the disputed domain name's associated web site redirected web users to Complainant's recruitment referral page, which indicates that Respondent has sought to benefit financially from the domain name by increasing the likelihood of generating referral income under Complainant's recruitment scheme. Such actions are clear indicia of bad-faith registration and use. B. Respondent
Respondent contends as follows:
Respondent's use of the disputed domain name neither infringes upon Complainant's marks nor interferes with Complainant's services in any way. The word “Avon” has meanings unrelated to cosmetics and beauty, including for example the well-known river in England, and it is a relatively common name for cities and towns in the United States (e.g., Avon, Colorado). The word also carries a Shakespearean connotation: the English town Stratford-upon-Avon is widely known as the birthplace of William Shakespeare, often referred to as the “bard of Avon.” Respondent's purpose for using the disputed domain name is to promote her writings and poetry. She deliberately chose the word “Avon” and the original “Avon L.T.D.” registration name (an acronym for “let them drink,” which Respondent contends is a reference to the River Avon) for its Shakespearean associations. Respondent maintains a M personal web page on which she has featured her poetry and writings since April 2007, a fact that indicates Respondent's use of the disputed domain name is unrelated to Complainant or its marks.
Even if the use of the word “Avon” in the disputed domain name engenders confusion with respect to Complainant's marks, Respondent's addition of the word “start” sufficiently distinguishes Respondent's web site from the products and services associated with Complainant's business. Although Complainant has used the phrase “start your Avon” in its recruitment promotions, it has never used the more generic phrase “start Avon”. Moreover, Respondent's use of lower-case letters amply distinguishes the disputed domain name from Complainant's marks, which generally employ all capital letters.
Respondent acknowledges that, for a period of time, the web site associated with the disputed domain name automatically redirected web traffic to Complainant's recruitment web site; however, the redirection was not for the financial or commercial gain of either Respondent or her daughter. Rather, the redirection was intended to be a more expedient means to reach the Complainant's recruitment web page. Neither Respondent nor her daughter used the disputed domain name to promote Avon's recruitment campaigns until after Avon communicated to its sales representatives that its representatives should do so. Even during the period in which Respondent was redirecting web traffic to Complainant's recruitment site Respondent's daughter was never guaranteed any referral commissions. Enrolling prospective recruits is not, without more, enough to generate commissions. Recruits must not only become independent sales representatives, but must go on to meet certain sales quotas and revenue thresholds. Any potential commercial gain was thus only speculative at best. Even so, because prospective Avon sales recruits were redirected to Complainant's official recruitment page—where the recruits would ultimately arrive in any event—there was never any harm to Complainant.
Respondent likewise did not profit from the banners or other advertisements on . Those advertisements were provided by Respondent's hosting provider, and not by Respondent. Hosting providers commonly allow users to create free web sites on the condition that the user permits the provider to advertise on the user's site. Respondent had such an arrangement with her provider for her web site at , but Respondent, as the disputed domain name holder, did not personally benefit from those advertisements, other than to receive free web hosting.
Respondent is not using the disputed domain name in bad faith. She is not using it to cull any financial gain. Although she did use incorrect registration information initially, her purposes were not motivated by bad faith; rather, Respondent was attempting to thwart the inevitable onslaught of offers to purchase the disputed domain name. Once she realized Complainant was attempting to contact her, Respondent took steps to update her registration information to reflect her accurate contact details. Respondent's poor health prevented her from making the necessary corrections more quickly. 6. Discussion and Findings
The Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), aims to resolve disputes concerning allegations of abusive domain name registration. Paragraph 4(a) of the Policy states that the domain holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name holder's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name holder's domain name has been registered and is being used in bad faith.
The Panel can rule in a complainant's favor only after the complainant has proven all of the above-listed elements by at least a preponderance of the evidence. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence to show that it is the owner of the registered mark AVON (and variations thereof) and that it widely uses, and has used for decades, those marks in commerce. The disputed domain name includes Complainant's mark in its entirety, and differs from Complainant's mark only by the addition of the generic word “start” preceding the mark and by her use of all lower-case letters instead of the all-capital letters generally associated with Complainant's mark.
Under longstanding Policy precedent the use of a generic word along with Complainant's mark in a domain name is not enough to overcome confusing similarity when, as here, the mark is the domain name's dominant feature.1 Because domain names are not case sensitive, Respondent's use of lower-case letters in the disputed domain name is a difference without legal significance from the standpoint of comparing to “AVON.”2
The Panel finds that the disputed domain name is confusingly similar to Complainant's AVON mark. Paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of circumstances, “in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented,” can demonstrate the holder's legitimate interests in the domain name. These circumstances include:
(i) before the domain name holder receives any notice of the dispute, the holder's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant is required to make a prima facie showing that Respondent lacks rights or legitimate interests in the domain name.3 Once Complainant makes the required showing, the burden shifts to Respondent to demonstrate, by plausible, concrete evidence, that she does have a right or legitimate interest in the disputed domain name.4
Complainant has plainly made the requisite showing in this case, thereby shifting to Respondent the evidentiary burden to demonstrate rights or legitimate interest.5 Complainant has never authorized or licensed Respondent to use its marks, and nothing in the record indicates that Respondent has been commonly known by the disputed domain name.
None of Respondent's evidence demonstrates that Respondent, before receiving notice of the dispute, used or made demonstrable preparations to use the disputed domain name in connection with any type of bona fide offering of goods or services. On the contrary, Respondent admits, at least for a time, using the domain name to redirect web traffic to Complainant's recruitment web site. That diversion, undertaken without Complainant's knowledge or consent, is not a legitimate interest whether or not Respondent's daughter stood to profit from the recruitment of new AVON independent sales representatives.
Respondent's post hoc suggestion that she would eventually use the domain name to feature her writings and poetry does not provide a defense under the Policy. There is no showing of “demonstrable preparations” to use the domain name6 for this purpose at any time, before or after Complainant's first contact with Respondent. As for her reference to Shakespeare, Respondent added to her web page the bard's likeness, generic information about her forthcoming writings, and a general disclaimer only after Complainant's counsel notified Respondent of the domain name dispute.
Paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.7 Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith in these contexts. Paragraph 4(b)(iv) provides that a holder's intentional use of the disputed domain name” to attract, for commercial gain, Internet users to [the holder's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the holder's] web site or location or of a product or service on [the holder's] web site or location” is evidence of bad faith. Bad faith in registration turns on (1) whether Respondent knew of Complainant and its marks, and (2) whether Respondent targeted Complainant to benefit from confusion generated by the similarity between the domain name and the marks.8
Complainant's marks have been so well-known for so long that very few Americans could credibly deny knowledge of them in 2007. A woman whose daughter was an AVON sales representative is not among that small group. In fact Respondent's use of “Avon L.T.D.” and the corresponding email address “avonbusinessowner@“ belies her rote assertion that she was unaware of Complainant's marks when she registered the domain name and in fact strongly suggests she did so to take advantage of the renown of Complainant's marks. Respondent's registration of the disputed domain name was thus made in bad faith.
The evidence makes clear that Respondent's use of the domain name was also in bad faith. Respondent admits that she used the disputed domain name without permission to redirect Internet users to Complainant's recruitment web site. Complainant has submitted evidence demonstrating that Respondent's daughter stood to earn commissions from Respondent's redirection. Her subsequent invitation to Complainant to make an offer to purchase the disputed domain name is further evidence of bad faith. Paragraph 4(a)(iii) of the Policy is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: June 3, 2009
1 Microsoft Corporation v. MindKind,WIPO Case No. D2001-0193 (finding that the addition of the word “health” to the complainant's mark MICROSOFT did not sufficiently distinguish the respondent's domain name from the complainant's marks); Scholastic Inc. v. 366 Publications,WIPO Case No. D2000-1627 (finding that merely adding the generic word “online” does not sufficiently distinguish the domain name from the complainant's mark); see also PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696 (“[T]he mere addition of common terms such as ‘sports,' ‘basketball,' or ‘soccer'” to the complainant's famous mark does not alleviate the domain name's confusing similarity).
2 See, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503.
3 Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448.
4 Id.
5 Kirkbi AG v. Michele Dinoia,WIPO Case No. D2003-0038.
6 The facts that Respondent is a writer and publishes her work on a Myspace page have nothing to do with the disputed domain name. Respondent had more than two years to set up a poetry page at the disputed domain name if that truly was her intent. Poor health may be to blame, but the Policy requires “demonstrable preparations” for bona fide use, not merely intentions. And her health was good enough immediately to make use of the disputed domain name to benefit her daughter.
7 See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
8 Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,WIPO Case No. D2008-0103.
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