WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avon Products, Inc. v. Whois Privacy Protection Service, Inc. / Extra Paid
Case No. D2013-0354
1. The Parties
The Complainant is Avon Products, Inc. of New York, United States of America, represented by Kilpatrick Townsend & Stockton, LLP, United States of America.
The Respondent is Whois Privacy Protection Service, Inc. / Extra Paid, Extra Paid of Bellevue, Washington, United States of America and Reykjavik, Iceland, respectively.
2. The Domain Name and Registrar
The disputed domain name <avonpk.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2013. On February 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2013, the Registrar 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 February 27, 2013 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 March 5, 2013.
The Center verified that the Complaint together with 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 March 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2013.
On March 6 and March 8, 2013, the Center received email communications on behalf of the Respondent to which the Center replied with information regarding the administrative proceeding, noting that the due date for submitting the Response was March 26, 2013.
The Respondent did not submit any formal Response. Accordingly, on March 28, 2013, the Center informed the parties that the Center would proceed to Panel Appointment.
The Center appointed Jon Lang as the sole panelist in this matter on April 11, 2013. 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. It owns approximately 4,000 trademark registrations and applications in over 100 countries around the world, including Pakistan (trademark no: 84625, dated November 27, 1984) for, inter alia, AVON (the AVON mark), AVON SHINE, AVON SOLUTIONS, AVON NATURALS and AVON EXTRAORDINARY (together, the “AVON Marks”). Since 1929, the Complainant has continually used the AVON Marks and the AVON brand is consistently ranked as one of the top 100 global consumer brands. The Complainant has over 6,000,000 independent Avon sales representatives and generates over USD 11 billion in annual revenue.
The Complainant has extensively promoted and advertised its AVON Marks throughout the world and has also enhanced public awareness of the AVON brand by sponsoring a number of high-profile philanthropic programs and women’s health-related charitable organisations.
The Complainant has promoted its AVON products on the Internet since 1996, launching its own website in 1997 at “www.avon.com”. The “www.avon.com” website attracts hundreds of thousands of visitors each month and generates millions of dollars in revenue on an annual basis. The Complainant also owns and uses a number of other domain names that include the AVON mark, including, inter alia, <avoncompany.com> and <youravon.com>, as well as the following domain names for country-specific websites: <avonconnects.co.uk>, <avon.co.jp>, <avon.com.cn>, <avon.ru>, <avon.ca>, <avon.hu> and <avon.com.mx>
The Complainant also uses social media to advertise and promote its Avon products and the Avon business model.
A valuation conducted by Interbrand estimated the worth of the AVON brand in 2012 at USD 5,151.000,000 ranking it the 71st most valuable brand in the world and one of the “Best Global Brands 2012”. It was also recognized as having one of the “Top 25 Corporate Reputations” in the 2012 Global Corporate Reputation Index published by Burson-Marsteller, a leading global public relations and communications firm.
The domain name in dispute, <avonpk.com> (the Domain Name) was registered by the Respondent on March 28, 2012.
The Respondent has not filed a formal Response in these proceedings and so not much is known about them other than what is contained in the Amended Complaint and annexures. The communications referred to earlier on March 6 and March 8, 2013, revealed nothing about the Respondent. Although not now accessible, it is alleged that the website to which the Domain Name resolved purported to offer and sell AVON products. It is also said that products unrelated to and competing with those of the Complainant were promoted. A screenshot from the website previously available at <avonpk.com> (included as an annex to the Complaint) prominently displays the sign “AVONPK” with the word “AVON” in black and the letters “PK” in green. The tag line “Believe & Achieve” appears under the sign. (The Complainant believes that this tag line was taken from the titles of recent booklets distributed by Complainant entitled BELIEVE and ACHIEVE). The screen shot also shows the promotion of ENLIVEN products (which are not associated with the Complainant) with the words “The First Product Campaign for Pakistan. (Enliven)”. There is a “Become a Representative” link to the right of the page and a “Join Us” link in the middle. As more particularly described below, the Complainant contends that the Respondent’s website has been used to promote a pyramid scheme.
Additional research into the purported company AVONPK carried out by the Complainant revealed the following information:
“AVONPK is a Multi Level Marketing Business Company. It was started in earlier 2012 from the Islands of CAYMAN. In a very short period of time, it has significant representatives in more than 4 countries including Pakistan and Turkey.
From AVONPK the products can only be purchased through membership, as it is not made available through any retail counters. The multilevel Marketing practice allows customers to purchase their products in the comfort and privacy of their own premises and helps to achieve their financial freedom.
Boron Group Limited owns AVONPK.COM as their subsidiary. The group has promoted the Famous Beauty and Cosmetics brands as Larger Exporter around the world.” (Emphasis added.)
5. Parties’ Contentions
The AVON Marks and name have obtained significant fame and are commonly recognized and associated with the Complainant. The AVON mark and name have acquired a high degree of public recognition and distinctiveness symbolising the source of high quality services offered by the Complainant. They embody valuable reputation and goodwill belonging exclusively to the Complainant.
It is evident from a so-called “marketing plan” annexed to the Complaint that the Respondent’s website has been used to promote a pyramid scheme. Page 5 of the marketing plan displays a screenshot of a page previously posted on the Respondent’s website. It includes the heading “Launched in Pakistan May 1, 2012,” and the copyright notice “© 2012, AVONPK all rights reserved.” The page prominently displays an “AVONPK” logo in a manner that sets apart and emphasises the Complainant’s AVON mark and includes the following statement: “We have start [sic] accepting the Payments through Libertry [sic] Reserve Now you can purchase Joining Pin or add fund [sic] to your Accout [sic] / E-Satatement [sic] through Liberty Reserve.” The Complainant believes that the Respondent used the marketing plan and <avonpk.com> website to lure Internet users into signing up for and paying for a purported opportunity to become an Avon representative.
The marketing plan states “START this Business By Purchasing Products from AVONPK,” and specifies that the “Online Business Account” for AVONPK is “www.avonpk.com”, thus clearly linking the Respondent’s Website and the marketing plan. Recruits have the option of paying USD 30 or USD 91 to participate in the pyramid scheme set out in the marketing plan. The scheme provides for the sales force to be compensated not only for sales made personally by each of them, but also for sales of others that they recruit.
The Complainant also believes that the Respondent has used the web page at
“www.avonpk.wordpress.com” to offer and sell the Complainant’s products and to “recruit” purported Avon representatives.
The Complainant believes that the Respondent has derived and continues to derive a financial benefit from the unauthorised use of the Domain Name, for example, by attracting Internet users to the website through which it “recruits” individuals purportedly to become Avon representatives (even though the Respondent is not affiliated with Complainant and not authorised to conduct such recruitment) and also from the unauthorised sale of AVON-branded products and products that compete with Complainant’s products. Such use of the Domain Name is nothing more than an attempt, in bad faith and in violation of the Policy, to exploit for commercial gain the Complainant’s valuable goodwill and reputation.
The Domain Name is Confusingly Similar to the Complainant’s marks
The Domain Name is identical and/or confusingly similar to Complainant’s AVON Marks and fully incorporates the AVON mark. The addition of the country abbreviation “pk” for Pakistan does not diminish, but rather adds to the confusing similarity between the Domain Name and Complainant’s AVON Marks, particularly given the Complainant’s reputation and the fact that the Complainant owns multiple registrations for its AVON Marks throughout the world, including in Pakistan. Given the fame of the AVON mark and Complainant’s many years of using the AVON Marks around the world, consumers who see the Domain Name will reasonably believe that it is related to the Complainant and its services. Consumers who come across the Domain Name and/or search the Internet for information about the Complainant or the Complainant’s products by using the Complainant’s name and marks may be directed to the Domain Name and associated website, thereby creating a likelihood of confusion.
Respondent has no Rights or Legitimate Interest in the Domain Name
The Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. The Complainant had, through extensive use, established rights in its AVON name and mark for many decades before the Respondent registered the Domain Name.
The Respondent carries the burden of establishing its rights or legitimate interests in the Domain Name but cannot do so. There is no relationship between the Complainant and Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s AVON mark. The Domain Name is not a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent. The Respondent is not affiliated with or endorsed by Complainant in any manner.
Even if the Respondent could argue that it was “recruiting” legitimate representatives (and collecting money therefrom) or re-selling genuine AVON products in Pakistan, the Respondent would still not have any rights or legitimate interest in the Domain Name.
It is the Respondent’s responsibility “to determine whether [its] domain name registration infringes or violates someone else’s rights.” A simple Internet search would have quickly revealed the Complainant’s extensive use of its AVON Marks. The Respondent could have easily discovered that the Complainant owns registrations for its AVON mark in Pakistan and other countries around the world.
The Respondent is neither using the Domain Name in connection with a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the Domain Name. Additionally, there is no evidence of any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Complainant believes that the Respondent registered and has used, and will continue to use the Domain Name solely for commercial gain for the Respondent’s own business and/or the pyramid scheme set out in the marketing plan.
In view of the extensive use and recognition of the Complainant’s AVON Marks and the fact that the Respondent has no rights in them, the Complainant reasonably believes that the Respondent has registered and is using the Domain Name not for any legitimate noncommercial or fair use purpose, but rather to profit from business, sales, or recruits generated through the Domain Name. Such use of the Domain Name does not constitute a legitimate, bona fide offering of goods or services.
Respondent Acquired and is using The Domain Name In Bad Faith
The Respondent registered and is using the Domain Name in bad faith. The Domain Name wholly incorporates the Complainant’s AVON mark and was acquired by the Respondent long after the AVON mark became famous.
The Respondent’s bad faith is also established by the likelihood that Internet users will mistakenly believe the Domain Name to be connected to or associated with the Complainant, when in fact it is not.
It is inconceivable that the Respondent was unaware of the Complainant’s AVON mark, given that the Respondent registered a domain name that incorporates it and <avonpk.com> has been used in connection with the purported recruitment of Avon sales representatives as well as the unauthorised sale of AVON products.
The Respondent’s bad faith registration and use of the Domain Name are further evidenced by the fact that the Respondent has sought to profit from the Domain Name by using it to create an aura of affiliation with the Complainant and, it is believed, to “recruit” Avon representatives and/or sell purported AVON products as well as products that compete therewith. Even if some goods previously offered by the Respondent through the <avonpk.com> website or the “AVONPK” business are genuine AVON products, the Respondent’s unauthorised actions still evidence bad faith registration and use.
There can be no doubt that the Respondent was fully aware of the Complainant’s rights in the AVON Marks when the Respondent registered the Domain Name, as a simple search of the Internet would have readily disclosed the existence of the Complainant and its multiple websites. It is clear that the Respondent has targeted the Complainant.
Furthermore, the Respondent’s bad faith is shown by its use of the Complainant’s AVON mark prominently in the marketing plan and in the heading of the website previously available at <avonpk.com>.
The Respondent could only have registered or acquired a Domain Name so confusingly similar to the Complainant’s AVON Marks to capitalise on the valuable goodwill associated with them.
Moreover, the Respondent’s bad faith registration and use are demonstrated by the Respondent’s unauthorised use of the AVON mark purportedly to recruit Avon sales representatives who must pay money to the Respondent in order to receive the marketing plan. Such recruits are actually being persuaded by the Respondent, under the guise of being a legitimate affiliate of the Complainant, to enter into a pyramid scheme.
The Respondent’s bad faith registration and use are also evident in the Respondent’s use of the Domain Name on the (previously available) Respondent’s website and in the marketing plan in connection with the sale of beauty or personal care products that do not originate from the Complainant (i.e. the Enliven products earlier referred to which are products that compete with those offered by the Complainant under its AVON Marks).
Finally, the Respondent’s bad faith registration of the Domain Name is evidenced by the fact that the Respondent originally failed to identify itself with respect to the Domain Name, choosing instead to conceal its address and contact information by using an identity protection service. Such concealment of contact information, in combination with the Respondent’s exploitation of the Complainant’s name and mark for commercial gain, is further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements.
A. Identical or Confusingly Similar
The Complainant of course has rights in its own trade marks for the purposes of the Policy, in particular the mark, AVON.
The Domain Name incorporates the Complainant’s mark AVON in its entirety and is very much its dominant element, being a mark of world-wide fame placed first in the Domain Name and followed by the initials “pk” (a common form of reference for Pakistan).
However, as the AVON mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trade mark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
Given the highly distinctive nature of the AVON mark which is readily recognisable within the Domain Name (and is very much its dominant element), the Panel is satisfied that the Domain Name <avonpk.com> is confusingly similar to the Complainant’s trade mark, AVON.
Even if one were to adopt a possibly slightly higher burden and require, as some UDRP panels have done, a risk that Internet users may actually believe that there is a real connection between the Domain Name and the Complainant and/or its goods and services, the Complainant would succeed in showing confusing similarity. The impression created by the Domain Name may well give rise to the possibility that Internet users may think that the owner of the Domain Name is in fact the owner of the Complainant’s mark to which it is similar, or that there is some form of association between the Respondent and the Complainant. The addition of the letters “pk”, far from distinguishing the Domain Name from the AVON mark, may in fact add to the likelihood of confusing similarity given that the Domain Name appears to have been used in connection with a business associated with Pakistan.
Accordingly, the Panel holds that the Domain Name is confusingly similar to the AVON mark for the purposes of the Policy and thus this element of paragraph 4(a)(i) of the Policy has been established. In these circumstances, there is little point in considering the issue of similarity with any other of the Complainant’s Marks.
B. Rights or Legitimate Interests
By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name.
Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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.
Here, however, the Respondent is not known by the Domain Name. Moreover, given the nature of the website to which the Domain Name resolved, the Panel would not accept that there is legitimate noncommercial or fair use. In any event, it is difficult to conclude that the Respondent did not derive a commercial benefit from the use to which the Domain Name has been put. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda, WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept that the website to which the Domain Name, (which so obviously takes advantage of the fame of the AVON mark to which it is confusingly similar) resolved, could be a bona fide offering. It is said that the Respondent’s website promoted not just the Complainant’s products (assuming such products were genuine) but also competing products. Whether or not that is the case (there appears to be no clear evidence of the former, but there is of the latter, with a screen shot clearly showing the promotion of Enliven products), it cannot be said that there is a bona fide offering. The Respondent has used a confusingly similar Domain Name to promote the products of a competitor. Whether or not the website also promoted the goods of the owner of the trade mark to which the Domain Name is confusingly similar, matters not. There can be no bona fide offering in these circumstances.
The Complainant refers to the “pyramid scheme” described in the marketing plan, which appears to be associated with the website to which the Domain Name resolved. Whether or not there is anything improper about such a scheme (i.e. where the sales force is compensated not only for sales they personally generate but also for sales of others that they recruit) is not a matter that needs to be considered in this decision. Potential “recruits” as they are described in the Complaint could assume that they are dealing with an affiliate of the Complainant or an entity otherwise connected in some way with it, not just because of the use of the “AVONPK” sign in the marketing plan but also because the website to which the Domain Name resolves (referred to in the marketing plan), contains links apparently for the purposes of recruitment, i.e. “Become a Representative” and “Join Us”. For these reasons, the recruitment element of the Respondent’s business also could not be regarded as a bona fide use.
The Respondent has not come forward with a Response and there is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above and accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is extremely unlikely that the Respondent was unaware of the Complainant’s AVON mark at the time of registration of the Domain Name.
One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once the Internet user arrives at the website, it is immediately clear, for whatever reason, that it is unconnected with the trade mark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trade mark owner and that is enough to establish bad faith. In fact in this case, it may well be that Internet users continued to believe that the Respondent’s website was associated with the Complainant, even after reviewing it.
For this reason, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
Given the Panel’s findings, there is little need to consider what if any further grounds there might be to support a finding of bad faith registration and use.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <avonpk.com> be transferred to the Complainant.
Date: April 19, 2013