WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avon Products, Inc., v. Registrate Co.
Case No. D2001-1415
1. The Parties
Complainant is Avon Products, Inc., a corporation incorporated in the state of New York and having its principal place of business at 1251 Avenue of the Americas, New York, New York 10020, U.S.A. Complainantís authorized representatives in this proceeding are its attorneys Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, U.S.A.
Respondent is Registrate Co., 138-1 Seocho-2dong, Seochu-ku, Seoul, Republic of Korea 137-072.
2. The Domain Name and Registrar
The Domain Name the subject of this Complaint is <avonproducts.com>. The Registrar of the Domain Name is Bulkregister.com, Inc.
3. Procedural History
3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on November 30, 2001, and in hard copy on December 4, 2001. Complainant certifies that on November 29, 2001, copies of the Complaint were sent to the Respondent by DHL overnight mail and to Respondentís administrative contact by DHL overnight mail and e-mail. A copy of the Complaint was sent to the Registrar, Bulkregister.com, Inc., on November 29, 2001, by Federal Express to its principal office in the State of Maryland (U.S.A.) and by electronic mail.
3.2. On December 6, 2001, verification was received from the Registrar, Bulkregister.com, Inc., that the disputed Domain Name <avonproducts.com> is registered in the name and address of Registrate Co., 138-1 Seocho-2dong, Seocho-ku, Seoul, Republic of Korea 137-072. Administrative & Technical Contact is Richard Dziadosh, ul. Purkyniego 12, Wroc3aw, PL 50-155, PL (Poland).
3.3. On December 7, 2001, WIPO Center determined (and the Administrative Panel has independently verified) that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).
3.4. On December 7, 2001, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center by courier to the registered addresses of the Respondent in Korea and the Respondent's Administrative & Technical Contact in Poland. These were returned to WIPO Center undelivered. Email copies without annexes were sent to Respondent at the email address provided in its registration information, and to email@example.com, (both of which were undelivered owing to permanent fatal errors) and to Complainant, ICANN and Bulkregister.com, Inc.
3.5. No Response was received from Respondent by the due date of December 27, 2001, and a Notification of Respondent Default was sent to the Parties by email on December 28, 2001.
3.6. On January 15, 2002, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Case File was sent by email to the Administrative Panel on January 16, 2002, and the hardcopy of the Case File was sent by courier.
4. Factual Background
4.1. Based upon Complainant's submissions, Complainant Avon Products, Inc., located in the U.S.A., is a well known purveyor of beauty and related products in many countries of the world. The Complainant Company was founded over a century ago and has used the brand name and mark AVON in various forms in connection with beauty products continually since 1929. Currently Avon products are sold in at least 137 countries, including the U.S.A., Japan, Canada, Australia, and countries in Europe, Asia, Latin America and South America. Sales of Avon products in 2000 were in excess of $US 5 billion.
4.2. By ordinary and reasonable interpretation the trademark AVON is world famous. Complainant owns over 40 federal trademark registrations in the U.S.A. and over 4,000 trademark registrations that include the AVON mark in over 118 countries throughout the world, including South Korea, and including the AVON mark in Korean characters.
4.3. Complainant protects its trademarks and currently spends more than $US300 million per year in advertising and promotion throughout the world. Complainant supports promotional and charitable activities including the Women of Enterprise Awards program that annually recognizes five women entrepreneurs for extraordinary business success; the Avon Breast Cancer Crusade; and the Avon Worldwide Fund for Womenís Health.
4.4. Complainant has a significant presence on the Internet through sites including <avon.com>, <avoncrusade.com>, <youravon.com>, <avoncompany.com>, and numerous country specific web sites, such as <avon.co.jp>, <avon.ca>, <avon.de>, <avon.es>, <avon.com.au> and <avon.com.br>. The <avon.com> web site attracts over 300,000 visitors per month and generates revenue exceeding $US5 million per year.
4.5. Respondent has a website at the Internet address <avonproducts.com> that diverts users to other sites concerned with commerce and gambling.
5. Partiesí Contentions
A. Contentions of Complainant
5.1. The contentions of Complainant include (paragraphs 5.2-5.7 below) that:
5.2. The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3. The disputed Domain Name incorporates Complainant's trademark AVON and trade name AVON PRODUCTS and the disputed Domain Name is identical or confusingly similar to them.
5.4. Respondent has no rights or legitimate interests in the disputed Domain Name, which has a record created date of November 6, 2000.
5.5. Respondentís registration and use of the disputed Domain Name is in bad faith in the terms of the Policy. Respondent has registered the Domain Name in order to prevent Complainant from using it; has disrupted the business of Complainant; and has attracted Internet users to Respondent's web site by confusion for commercial gain.
5.6. Respondentís usage of the disputed Domain Name, in addition to being in contravention of the Policy, also violates Complainantís rights under United States law and under Korean law.
5.7. The remedy requested by Complainant is that the disputed Domain Name <avonproducts.com> be transferred to Complainant or that the Domain Name be cancelled and the Complainant be given advance notice so that it can register it.
B. Contentions of Respondent
5.8. No Response has been received from Respondent.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1. Paragraph 4(a) of the Uniform Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3. The Panel finds that WIPO Center has fulfilled its responsibility under Paragraph 2 of the Rules to employ reasonably available means calculated to achieve actual notice to Respondent.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.4. Complainant's trademark is AVON and its Company name is Avon Products, Inc. The disputed Domain Name registered by Respondent is <avonproducts.com>. Clearly the disputed Domain Name incorporates Complainant's trademark and Company name. Discrepancies in punctuation and the inevitable inclusion of ".com" or similar are of no consequence. The Administrative Panel finds that the disputed Domain Name is confusingly similar to a trademark in which Complainant has rights in terms of Paragraph 4(a)(i) of the Uniform Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.5. Complainant certifies that its trademark AVON has been in use continually since 1929 and that it has traded with the aid of the Internet since 1996 and with the web site <avon.com> since 1997. Complainant further certifies that Respondent has no connection with Complainant and that Respondent has no rights or legitimate interests in the disputed Domain Name.
6.6. Whilst it is for Complainant to prove its case, it is noted that Respondent has not denied the Complaint nor responded with any evidence of having used the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services in the terms of Paragraph 4(c)(i) of the Policy.
6.7. Respondent has not responded with any evidence that as an individual, business, or other organization it has been commonly known by the Domain Name in terms of Paragraph 4(c)(ii) of the Policy.
6.8. On the evidence presented by Complainant, the disputed Domain Name is in commercial use and there is no legitimate noncommercial or fair use of the Domain Name in terms of Paragraph 4(c)(iii) of the Policy.
6.9. The Administrative Panel finds that Respondent has no rights or legitimate interests in the disputed Domain Name in terms of Paragraph 4(a)(ii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.10. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name has been registered and is being used in bad faith. The Policy provides four alternative circumstances in Paragraphs 4(b)(i), (ii), (iii) and (iv) that, without limitation, shall be evidence of bad faith. The Complaint draws the attention of the Administrative Panel to Paragraphs 4(b)(ii), (iii) and (iv) of the Policy.
6.11. Paragraph 4(b)(iv) of the Policy provides for a finding of bad faith where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location". Evidence produced by Complainant and not contested by Respondent demonstrates that the disputed Domain Name was in use; Internet users were attracted to it by confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website; and that users were diverted to websites or shown advertisements for purposes that it is reasonable to conclude were to the ultimate commercial benefit of Respondent. There can be no plausible explanation for Respondent's choice of the disputed Domain Name other than the expectation that Internet users would be misled intentionally to it and thence to websites of Respondent's choosing through confusion with Complainant's good name and trademark. The Administrative Panel finds bad faith proved generally and also specifically in the terms of Paragraph 4(b)(iv) of the Policy.
6.12. In summary, as concluded in 6.4 above the disputed Domain Name is confusingly similar to Complainant's trademarks and Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.9 above, Respondent has no rights or legitimate interests in the Domain Name and Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.11 above, Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three points required by Paragraph 4(a) of the Uniform Policy and the Administrative Panel gives its Decision for the Complainant and against the Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name is confusingly similar to the trademark AVON in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent has registered and is using the disputed Domain Name in bad faith. The disputed Domain Name <avonproducts.com> shall be transferred to the Complainant.
Dr. Clive N. A. Trotman
Dated: January 29, 2002