WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Avon Products, Inc. v. Simon Lee / Domains by Proxy, Inc. Case No. D2010-0668 1. The Parties
The Complainant is Avon Products, Inc., New York, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.
The Respondent is Simon Lee, Qawra, St Paul's Bay, Malta / Domains by Proxy, Inc., Scottsdale, Arizona United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2010. On April 28, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 30, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 7, 2010. 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 the Respondent of the Complaint, and the proceedings commenced on May 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2010. The Response was filed with the Center on May 10, 2010.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 3, 2010. The Panel finds that it was properly constituted. The Panel has submitted the 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
The Complainant was founded in 1886 and is the world's largest direct seller of beauty and related products and one of the largest global beauty companies in the world. The Complainant owns numerous federal trademark registrations in the United States of America for the trademark AVON and has continually used these since 1929 to identify its beauty products. The Complainant also owns over 4,000 trademark registrations in over 118 countries throughout the world for trademarks consisting of or incorporating the trademark AVON, including in Malta and throughout Europe.
The Complainant has extensively promoted and advertised its AVON trademark through multimedia advertising (over $350 million spent in 2007) and sponsorship of major cultural and social events (as of 2008, the Complainant's philanthropy has raised more than $660 million worldwide). The promotion and exploitation of the AVON trademark have generated sales of Avon products throughout the world totaling nearly $10 billion in 2007.
The Respondent registered the disputed domain name on February 4, 2010 and proceeded to post a website to which it resolves under the name “AVON MALTA: A Range of Superb Avon Products at Great Prices”. It is a sophisticated website that has details of a range of the Complainant's products for sale, as well as an advertisement for an unrelated clothing store in Malta.
Initially, the Respondent's identity was masked through Domains by Proxy, Inc., a private registration service. Once the Complaint was filed the Registrar of the disputed domain name, Go D, Inc., provided details of the Respondent. 5. Parties' Contentions A. Complainant
The Complainant contends the disputed domain name is identical and/or confusingly similar to the Complainant's AVON trademark as it fully incorporates the trademark AVON exactly and in its entirety. The mere addition of the country name “Malta” is of no import. Given the renown of the AVON trademark and the Complainant's extensive use of the AVON designation in combination with other terms, consumers would reasonably believe the disputed domain name is related to the Complainant. The Respondent is clearly hoping to mislead consumers into believing the disputed domain name is affiliated with the Complainant to attract Internet users to the Respondent's website for commercial gain.
The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name because the AVON trademark is so well-known and recognized that there can be no rights or legitimate use by the Respondent of a domain name containing the AVON trademark. Further, the Complainant has not given any license, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant's AVON trademark, and there is no business relationship whatsoever between the Respondent and Complainant. The website to which the disputed domain name resolves includes an advertisement that promotes a clothing store in Malta. This suggests the Respondent is attempting to exploit the goodwill associated with the Complainant's AVON trademark for commercial gain.
The Complainant contends the Respondent has registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the goodwill associated with the Complainant. This is demonstrated by the disputed domain name (i) being registered well after the AVON name and trademark became well-known, (ii) is nearly identical to the Complainant's AVON trademark, (iii) has been used in an apparent attempt by the Respondent to pass himself off as a legitimate distributor of the Complainant's products in Malta, and (iv) resolving to a website that ostensibly looks like a legitimate website of the Complainant but in fact is not authorized by the Complainant. The Respondent's use of the Complainant's AVON trademark to create initial interest confusion and to promote a business that is completely unrelated to and unauthorized by the Complainant is not a use in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name. Although the Respondent posts a disclaimer on his website it is ineffective because it appears at the end of each page, following detailed information on the Complainant's products. The fact that the Respondent originally failed to identify himself by using an identity protection service in connection with the disputed domain name is further evidence of bad faith. B. Respondent
The Respondent contends he contacted the Complainant in January 2010 to find out if he could “officially” serve as a reseller of “their excellent brand of products” in Malta. Once it was established the Complainant did not want to pursue this proposal, the Respondent proceeded to “unofficially” resell a small number of the Complainant's products in Malta. In order to promote these products in that country the Respondent needed to utilize a domain name that would feature in the search engines for prospective customers in Malta. The Respondent notes on the website to which the disputed domain name resolves that only “a range” of the Complainant's products are distributed, and that they have “no official connection with the Avon Company Ltd.”
The Respondent would prefer to have the official consent of the Complainant to distribute its products and contends that he has done nothing to tarnish its worldwide brand, but rather, has attempted to make the Complainant's products more widely accessible. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant's trademark AVON, and adds the descriptive word “malta”. The addition of the word “malta” does not lessen the inevitable confusion of the domain name with the Complainant's trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant. The Respondent's intention to use the website to which the disputed domain name resolves is “to resell their [the Complainant's] excellent brand of products in Malta” does not give the Respondent any rights or legitimate interests in the disputed domain name. The Complainant has not endorsed the Respondent's use of its trademark in a domain name that resolves to a website used for selling a selection of the Complainant's goods and advertising an unrelated clothing store in Malta. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has conducted a very substantial, well known and profitable business of international renown for many decades under its trademark AVON. The Respondent has made it clear that he was aware of the Complainant's trademark and that, indeed, he “needed to utilize a domain name that would feature in the search engines for prospective customers in Malta”. Having had his offer of becoming an “official” reseller of Avon products in Malta rejected by the Complainant in January 2010, the Respondent then proceeded to register the disputed domain name the following month and use it as the URL for a website selling some of the Complainant's products and advertising an unrelated clothing store in Malta. Although there is a disclaimer at the bottom of the website's pages, it only comes after substantial reference to the Complainant's products using the Complainant's trademark AVON throughout the website, and is ineffective in precluding consumer confusion. The disclaimer is a sham.
This Panel is persuaded that the Respondent has used the disputed domain name with the intention of attracting Internet users to his website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the website. This Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 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 the Complainant.
Andrew F. Christie
Sole Panelist
Dated: June 10, 2010
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