WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avon Products, Inc v. Jerrold Burden
Case No. D2014-2166
1. The Parties
The Complainant is Avon Products, Inc, New York, New York, United States of America (“US” or “USA”), represented by Kelley Drye & Warren, LLP, USA.
The Respondent is Jerrold Burden, Fort Lauderdale, Florida, USA, self-represented.
2. The Domain Name and Registrar
The disputed domain name <avonteens.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2014. On December 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 16, 2014 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 18, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2015. At the Respondent’s request, the due date was extended to January 21, 2015. The Response was filed with the Center on January 16, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January 29, 2015. 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 is a business corporation organized under the laws of the State of New York, USA, and headquartered in New York City. The Complainant describes its business as follows:
“For more than eight decades, Avon has used the AVON mark in connection with the distributorship and direct sales services, door-to-door retail merchandising, telephone shop at home services, mail order catalog sales, and interactive retail sales rendered by means of a global computer information network, all in the fields of beauty care, salon and spa services, housewares, clothing, toiletries, skin care products, cosmetics, jewelry, gift items, collectibles, toys, personal care products, pre-recorded videos, audio tapes and compact discs, throughout the United States and the world.”
The Complainant’s stock is publicly traded on the New York Stock Exchange. According to the Complainant’s website at “www.avon.com” and the Complainant’s most recent filings with the US Securities and Exchange Commission, the Complainant is one of the world’s largest direct sellers, with more than six million independent sales representatives, in more than 100 countries, producing annual revenues in excess of USD 10 billion.
The Complainant holds numerous trademark registrations for AVON as a standard character mark, including US Registration No. 633318, registered on August 21, 1956. This mark is accompanied in some instances by the tag line THE COMPANY FOR WOMEN, which the Complainant has also registered as a trademark, US Registration No. 2625444 (registered September 24, 2002). The AVON mark appears on the Complainant’s websites, on the packaging and labelling of the Complainant’s products, in sales and training brochures, and in advertising in the US and other countries. Previous WIPO UDRP panels have concluded that the AVON mark is long established and well known in the USA and many other countries. See, e.g., Avon Products, Inc. v. Whois Privacy Protection Service, Inc. / Extra Paid, WIPO Case No. D2013-0354; Avon Products, Inc. v. Simon Lee / Domains by Proxy, Inc., WIPO Case No. D2010-0668.
The Domain Name was created on June 9, 2010 and is registered to the Respondent, an individual residing in Fort Lauderdale, Florida, USA. The Domain Name resolves at the time of this decision to a website headed “www.avonteens.com” with the tag line “Helping Teens Connect” (the “Respondent’s website”). The website includes short, illustrated articles on subjects concerning “teens”, particularly in the fields of “fashion” and “beauty”. Some of these mention cosmetics products that compete with the Complainant’s. The website also displays some third-party advertising and links to the municipal websites of several cities and towns named “Avon”, and the text refers to “Avon girls” and readers who live in “Avon cities”.
On July 22, 2014, the Respondent filed an application for US trademark registration of AVON TEENS, Serial Number 86344255. According to the Trademark Status and Document Retrieval database operated by the United States Patent and Trademark Office, (USPTO) suspended further action on the application on February 3, 2015, noting the likelihood of confusion with the Complainant’s registered marks.
In August 2014 the Complainant discovered the Respondent’s trademark application and website. At that time, the Respondent’s website header was similar to the Complainant’s and included a tag line, “the company for young women”, similar to the Complainant’s trademarked tag line, THE COMPANY FOR WOMEN, displayed in a similar font and colors. The Panel notes that this header and tag line appear on archived screen shots of the Respondent’s website as late as December 2014, available from the Internet Archive’s Wayback Machine.
In September 2014, the Complainant’s counsel sent the Respondent a cease-and-desist letter. Counsel for the Respondent replied with a letter dated October 1, 2014, which is attached to the Complaint. The letter from the Respondent’s counsel attached a “business plan” that the Respondent had mailed to some thirty Avon executives three years earlier, “with the hope that he could be a catalyst for changing and expanding the AVON brand to a younger demographic to assure its continued viability.” According to the letter, the Complainant had not responded to the Respondent’s proposals, and the Respondent “merely would like to have a dialogue with appropriate people at AVON to make sure the teen market is being fully addressed.” In response, counsel for the Complainant repeated its demand to cease using the AVON mark and transfer the Domain Name. This proceeding followed.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its AVON marks and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant points to the October 2014 letter from the Respondent’s counsel as evidence that the Respondent knowingly targeted the Complainant’s mark, publishing a website associated with the Domain Name with the intent of attracting Internet users for commercial gain.
The Respondent states that he developed the Respondent’s website “as a BETA” in an attempt to promote his concept of expanding the Complainant’s market among teenage girls:
“Thus, in early 2011, the concept was born, and the website developed with the expectation that Avon Products would fall in love with the idea. Today, the site will now fulfill that plan by connecting teens that are living in the cities and towns named Avon across the country, promoting charitable causes, and exchanging ideas of young women.”
Given the Complainant’s reaction, the Respondent redeveloped the website into its current version, which does not discuss the Complainant’s products. According to the Respondent, the new version of the website is “inspired by Avon, Colorado”, near the town where the Respondent lived as a child.
The Respondent states that he filed his trademark application for AVON TEENS to “protect his interest in the concept” that he was promoting to the Complainant. He reports that he has since amended the application to remove any reference to cosmetic products.
The Respondent denies bad faith. He asserts that his original efforts were made in good faith to promote a business concept to the Complainant, and that he now operates the website associated with the Domain Name as a wholesome “teen platform” without reference to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant holds numerous registered trademarks consisting of, or incorporating, its AVON mark. This mark is repeated in its entirety in the Domain Name, which adds the dictionary word “teens”. This generic addition does not avoid confusion with the mark, particularly given that teenage girls are already part of the Complainant’s market.
UDRP panels customarily treat the first element of a Policy complaint as a threshold standing requirement, based on a straightforward visual or aural comparison with the domain name in question. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’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) that the Respondent has been commonly known by the Domain Name, even if it has 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 consumers or to tarnish the trademark or service mark at issue.
The Respondent has expressed his reasons for selecting the Domain Name, both in his counsel’s October 2014 letter and in the Response itself. The Respondent intentionally targeted the Complainant’s trademark, preparing a “beta” website mimicking the Complainant’s website in several respects but with a focus on the market for teenage girls interested in beauty products. This is not a noncommercial use of the Domain Name, nor is it a “fair use” within the meaning of the UDRP or US trademark law. The Respondent hoped to interest the Complainant in his business plan, which was presumably not intended as a free gift to the Complainant. Appropriating the Complainant’s mark without permission and using it for a publicly available “beta” website cannot be considered either a fair use or a use in connection with a bona fide offering of goods or services.
The Respondent’s more recent application for trademark registration of a corresponding name does not create rights in the Domain Name. It does not appear that the Respondent has actually offered goods or services labelled with that mark, and the Respondent has not demonstrated common law trademark rights in AVONTEENS. The USPTO has already suspended the Respondent’s trademark application, noting the likelihood of confusion with the Complainant’s registered trademarks.
The Panel finds that the Respondent has not demonstrated rights or legitimate interests in the Domain Name within the meaning of the Policy and concludes that the second element of the Complaint has been established.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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.”
The Complainant implicitly relies on this paragraph of the Policy and contends that the Respondent sought to “capitalize on the goodwill of Complainant’s famous mark for his own commercial gain.” The Respondent counters that he disclosed what he was doing and actively sought an opportunity to discuss his business concept with the Respondent.
The fact remains that the Respondent’s business proposal and “beta” website were unsolicited, and it is undisputed that the Complainant never gave the Respondent permission to use the Complainant’s AVON mark in the Domain Name. The Complainant also never authorized the Respondent to display its mark and products on a prototype website, published to the general public for months. The Respondent’s website did not prominently disclaim affiliation with the Complainant and actually enhanced the likelihood of confusion with the Complainant by including a tag line similar to the Complainant’s registered tag line, THE COMPANY FOR WOMEN, changing it slightly to “the company for young women”, displayed in similar fonts and colors. The Respondent’s website no longer displays the Complainant’s mark and the similar tag line, but this does not excuse the Respondent’s original misuse of the Complainant’s registered trademarks and the continuing problem of “initial interest confusion” among Internet users, because the Domain Name itself is confusingly similar to the Complainant’s AVON mark.
The Panel finds that the confusion as to source, both in the Domain Name and on the associated website for a time, was not inadvertent but rather a part of the Respondent’s admitted efforts to interest the Complainant in his teen marketing concept. Presumably, this was done at least partially in the hope of realizing commercial gain, not directly by making sales or pay-per-click advertising revenues through the “beta” website, but rather by seeking compensation in some form if the Complainant “loved the idea” as the Respondent expected. The current version of the Respondent’s website does not use the Complainant’s marks but includes articles about beauty products, naming some offered by the Complainant’s competitors. The website also displays third-party advertising, presumably to generate revenue from the website.
Taking the Respondent at his word, he had a creative idea that he unsuccessfully tried to sell to the Complainant, sending an illustrated business plan directly to several of the Complainant’s executives. They did not respond, but that did not justify the Respondent in trying to get their attention by appropriating the Complainant’s trademarks, registering a confusingly similar Domain Name, and actually publishing a website that looked as though it could be operated by the Complainant. It also does not justify the Respondent in continuing to use the confusingly similar Domain Name for commercial as well as “community” purposes.
The Respondent may have been naïve rather than malicious, but the Panel finds that his egregious misuse of the Complainant’s trademarks and his apparent disregard for the Complainant’s legal trademark rights amounts to bad faith for purposes of the Policy, paragraph 4(b).
The Panel concludes on this basis that the Complainant has established the third element of the Complaint.
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, <avonteens.com>, be transferred to the Complainant.
W. Scott Blackmer
Date: February 12, 2015