WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avon Products, Inc. v. Domains Administrator c/o Dynadot Privacy
Case No. D2013-2056
1. The Parties
Complainant is Avon Products, Inc. of New York, New York, United States of America (“United States”), represented by Kilpatrick Stockton, LLP, United States of America.
Respondent is Domains Administrator c/o Dynadot Privacy of San Mateo, California, United States .
2. The Domain Name and Registrar
The disputed domain name <shopavon.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the Registrant and providing the contact details. Respondent is apparently a privacy screening service for the disputed domain name. The identity of the actual Registrant has not been revealed.
The Center verified that the 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 December 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2013.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 15, 2014. 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
Complainant annexed to its Complaint representative examples of its registrations for the trademark AVON, and variations thereof, in countries including China, Russia, the United Kingdom of Great Britain and Northern Ireland, the European Union, South Korea, Australia and the United States. Of these, the earliest is a United States registration for the mark AVON in connection with cosmetics and toiletries. The registration was issued in 1956 and claims first use as of 1929. Complainant annexed to the Complaint dozens of other AVON registrations in numerous countries internationally.
The disputed domain name was registered in June, 2002, and transferred to its current Registrar, Dynadot, LLC, on September 9, 2013. The Registrar was unable to confirm whether Respondent was the registrant prior to transfer into the registrar’s system.
5. Parties’ Contentions
Complainant asserts that it was founded in 1886 and is today the world’s largest direct seller of beauty related products and one of the largest global beauty companies in the world. Complainant has continually used the AVON trademark to identify its beauty products since 1929 and up to the present. Complainant asserts that it generates over USD 11 billion in annual revenue, has more than 6 million independent Avon sales representatives, and markets its products to women in more than 100 countries, in Europe, the Middle East, Asia, Latin America and South America. Complainant asserts that it owns approximately 4,000 trademark registrations and applications in over 100 countries around the world for AVON marks, including in China, Russia, the UK, the European Union, South Korea and Australia, as well as in the United States.
Complainant asserts that in 1997 it launched its own website at “www.avon.com” to advertise and to sell its AVON products online. Complainant owns a number of other active websites that include a linked to domain names that incorporate the AVON mark, including <avoncompany.com> and <youravon.com>. Complainant asserts that it uses the subdomain <shop.avon.com> for webpages allowing customers to purchase AVON products online. Complainant has provided a plethora of evidence that its AVON brand has become famous. Complainant asserts that its brand has been valued at USD 4.61 billion, making it the 87th most valuable brand in the world and one of the best global brands of 2013. AVON has also been named as one of the best global green brands, one of the 100 most innovative companies, and the number one beauty and cosmetics brand in South Africa, as well as having one of the twenty-five best corporate reputations. Previous panelists have found the AVON mark to be “famous” (Avon Products Inc. v. Jong Soo Lee, WIPO Case No. D2001-0272), “of international renown” (Avon Products, Inc., v. Simon Lee/Domains By Proxy, Inc. WIPO Case No. D2010-0668), and “well-known and recognized through the world” (Avon Products, Inc. v. Tebix Creative, Temidayo Oyebade, WIPO Case No. D2010-0669).
Complainant asserts that the disputed domain name was registered by Respondent long after the AVON mark became famous in the United States and in other countries. Respondent has used the disputed domain name at various times either to post a verbatim copy of Complainant’s <avon.com> website, to redirect and monetize web traffic through an affiliate provider program to generate revenue, or for other purposes. Complainant asserts that Respondent appears to be affiliated with multiple domain names based on well-known third party brands that are being used in a similar fashion for profit. Complainant asserts that the domain names <oshkoshbgosh>, <storeapple.com>, <old-navy.com>, <paypalebay.com>, and <wwwabercrombie.com>, among others, have all been registered through Dynadot, LLC, the same registrar of the disputed domain name, use the same privacy service as the disputed domain name, and share the same servers, with the same IP address as the disputed domain name.
Complainant asserts that the disputed domain name is identical and/or confusingly similar to Complainant’s AVON marks, as it fully incorporates the exact AVON mark in its entirety, adding merely the generic word “shop”, which adds to the confusing similarity between the disputed domain name and Complainant’s AVON marks. In view of the fame of Complainant’s AVON marks, Complainant asserts that relevant customers who seek the disputed domain name will reasonably believe that it is related to Complainant and its services, and may thus be directed to the website associated with the disputed domain name, thereby creating a likelihood of confusion.
Complainant asserts that Respondent cannot demonstrate or establish any rights or legitimate interests in the disputed domain name, because Complainant’s adoption and use of the AVON mark predates the first use of the disputed domain name by many years, because Respondent has failed to meet its burden to demonstrate or establish any rights or legitimate interest in the disputed domain name, because there is no relationship between Complainant and Respondent giving rights to any license, permission or other right by which Respondent could own or use a domain name incorporating Complainant’s AVON mark, and because the disputed domain name is not and could not be contended to be a name or a nickname of the Respondent, nor in any other way identified with or related to any rights or any legitimate interests of the Respondent. Complainant asserts that Respondent has not registered and is not using the disputed domain name for any legitimate noncommercial or fair use purpose, but rather to profit from the business, sales or recruits possibly generated through use of the disputed domain name.
Complainant asserts that Respondent has registered and is using the disputed domain name in bad faith, as evidenced by the fact that the disputed domain name wholly incorporates Complainant’s AVON mark, and was acquired by the Respondent long after the AVON mark became famous. In view of the fame and worldwide renown of the AVON mark, Complainant asserts it is reasonable to infer that Respondent was aware of Complainant’s mark and either registered or acquired the disputed domain name in bad faith.
Complainant asserts that Respondent’s bad faith in acquiring and using the disputed domain name is also evidenced by the fact that the disputed domain name has resolved to a copy of Complainant’s website to divert and monetize web traffic for commercial gain. Complainant asserts that Respondent’s bad faith in registering and using the disputed domain name is evidenced by the fact that Respondent is affiliated with, owns and/or uses multiple domain names based on well-known marks of third parties to redirect and monetize traffic for profit in the same manner as it asserts the disputed domain name is used. Finally, Complainant asserts that Respondent’s use of an identity protection service, when combined with Respondent’s blatant exploitation of Complainant’s AVON marks for commercial gain, further evidences Respondent’s bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
However, the Policy, paragraph 4(b), states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
These circumstances are non-exclusive, and a panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
The respondent may demonstrate rights in or legitimate interests to the domain name by any of the following, without limitation (Policy, paragraph 4(c):
(i) before any notice to the respondent of the dispute, your 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 respondent , as an individual, business, or other organization have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Where, as here, a respondent is in default, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
The Panel agrees that the disputed domain name <shopavon.com> is confusingly similar to Complainant’s registered trademark AVON. Rather than serving to distinguish Respondent’s domain name from Complainant’s registered trademark, adding the generic term “shop” to the registered term AVON is likely to lead Internet users to believe that they can “shop” for Complainant’s AVON products on its website. Adding the generic term “shop” to Complainant’s famous trademark increases, rather than mitigates, the confusing similarity between the disputed domain name and the mark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191. The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
There is no evidence that Complainant has licensed or authorized Respondent to use Complainant's trademarks, or that Respondent has any authorized relationship with Complainant or otherwise has permission to apply for any domain name incorporating Complainant’s trademark. There is no evidence that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, in this Panel’s assessment, the only “use” Respondent has made of the disputed domain name is to mirror Complainant’s “wwwshop.avon.com” webpage, in order to redirect web traffic through an affiliate program provider. This is not a legitimate use. See Cosmetic Warriors Limited v. Kogito Pte Limited, WIPO Case No. D2012-1813. As a result, Complainant has established paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the disputed domain name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website.
The Panel finds it extremely unlikely that Respondent was unaware of Complainant’s famous trademark before it registered the disputed domain name. The fact that Respondent’s website mirrors Complainant’s website eliminates any possible doubt. In view of Respondent’s default in this proceeding, this Panel draws an inference that Respondent’s mirror website was intended to generate affiliate program revenue by misleading Internet users into “shopping” on Respondent’s “www.shopavon.com” website instead of Complainant’s “shop.avon.com” webpage. This is 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 disputed domain name <shopavon.com> be transferred to Complainant.
Jordan S. Weinstein
Date: January 29, 2014