Avon Products, Inc. v. Jongsoo Lee

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avon Products Inc. v. Jongsoo Lee

Case No. D2001-0272

1. The Parties

The Complainant is Avon Products Inc., of 1251 Avenue of the Americas, New

York, NY 10020, United States of America.

Represented by Fross, Zelnick, Lehrman & Zissu, of 866 United Nations Plaza,

New York, NY 10017, United States of America.

The Respondent is Jongsoo Lee, of 606 Mure 6-25-23, Mitaka, Tokyo, 181-0002,

Japan.

Respondent is not represented.

2. The Domain Name and Registrar

The domain name with which this dispute is concerned is: <avonkorea.com>.

The Registrar with which the domain name is currently registered is Network

Solutions Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, United States

of America.

3. Procedural History

3.1 The Complaint was filed electronically and in hard copy to the World Intellectual

Property Organization Arbitration and Mediation Center (the "WIPO Center") on

February 21 and February 22, 2001.

3.2 On March 2, 2001, the Registrar verified:

(i) that the domain name is registered with it;

(ii) that the current registrant of the domain name is the Respondent;

(iii) that the Policy applies to the domain name;

(iv) that the domain name is currently in "Active" status;

(v) Respondent's Administrative Contact Billing Contact and Technical Contact

is Lee, Jongsoo,112-1601 hyundaeA hongjae4dong sudaemunku Seoul, Korea 080 KR.

3.3 On March 6, 2001, all formal requirements for the establishment of the

Complaint having been checked by the WIPO Center were found to be in compliance

with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform

Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental

Rules. The Panel has checked the file and confirms the WIPO Center's finding

of proper compliance with the Rules and establishment of the Complaint.

3.4 On March 7, 2001, the WIPO Center sent the Notification of Complaint and

Commencement of Administrative Proceeding as follows:

(i) by courier and by e-mail to Respondent, the Administrative Contact, Billing

Contact and Technical Contact;

(ii) by e-mail to the e-mail address shown in the web page to which the domain

name resolves.

3.5 The Administrative Proceeding commenced on March 7, 2001 and the Response

was due on March 26, 2001.

3.6 On March 23, 2001, Respondent requested an extension of time to April 3,

2001 on the ground that further time was required to translate materials from

Korean and Japanese.

3.7 Complainant objected to Respondent's request and the Response was filed

electronically on March 26, 2001.

3.8 Panelist D.J. Ryan, having filed the Statement of Acceptance and Declaration

of Impartiality and Independence, was appointed as sole panelist on April 5,

2001.

3.9 On April 10, 2001, Complainant filed a request for permission to file a

supplemental Response to Respondent's Response. This Request was accompanied

by the Supplemental Material and was communicated to Respondent on that day.

4. Complainant's Request to File Supplemental Material

4.1 The Response contained submissions and partially translated material relating

to the relationship between Respondent and Complainant's Japanese subsidiary.

Complainant's Supplemental Material sought to deal with this.

4.2 The Panel, having considered the Response and the Supplemental Material

allowed the Request and issued the Procedural Order attached as Attachment A.

4.3 Respondent sought an extension of time to reply to the Supplemental Material

on the ground of language difficulties. An extension to May 7, 2001 was granted

and Respondent's reply material was filed on that day.

5. Factual Background

5.1 Complainant is a U.S. corporation engaged in the business of direct selling

of beauty and related products. It was founded in 1886 and Complainant asserts

that since 1929 it has continually used the word "Avon" as its name and mark

to identify its products. Complainant asserts that its "Avon" products are currently

sold in over 137 countries, and that it is the world's largest direct seller

of direct beauty and related products. Complainant adduces evidence of wide-spread

knowledge of its "Avon" trade mark (Complainant Exhibit E).

5.2 Complainant is the registered proprietor of over 40 federal trade mark

registrations in the United States and over 4,000 trade mark registrations in

over 118 countries throughout the world including Korea, that consist of, or

include the word "Avon" (Complaint Exhibits F, G and H).

5.3 Complainant is the owner of the domain name <avon.com> as well as

a number of country specific names in the CC domains, including <avon.co.jp>.

Complainant is also the owner of a number of other domain names in which the

word "Avon" is the dominant identifying particular (Complaint Exhibits J and

K). Web pages accessed through the <avon.com> domain name show prominently

the words "AVON.COM" with the tag line "the company for women".

5.4 The domain name is registered to Jongsoo Lee, the brother of Jong-Seon

Lee (hereinafter called "Ms Lee") who is stated to be the founder and president

of AvonKorea. There is no indication of the legal status of Avonkorea, corporate

or otherwise. The Response has been signed by Ms Lee, apparently on her own

behalf, and both the Complaint and the Response appear to proceed on the basis

that the Respondent is Ms Lee and not the domain name registrant, Jongsoo. In

what follows, the Panel will therefore refer to Ms Lee as "Respondent" except

where a distinction is to be drawn.

5.5 Respondent is an "Avon lady" operating in Japan. That is, she is an independent

sales representative authorised by Avon Products Co. Limited, the Japanese subsidiary

of Complainant (hereinafter called "Avon Japan"). She is one of over 800,000

such independent representatives authorised to sell Avon products in Japan.

5.6 The domain name was registered in February 2000 and resolves to the web

site of AvonKorea. Respondent asserts that she established the <avonkorea.com>

web site for the purpose of advertising and on-line sale of Avon products in

Korea. Respondent further asserts that she did so with the consent of Avon Products

Japan, and that she offers for sale Avon products. Respondent exhibits with

partial translation an Avon Products name card and catalogue each bearing the

name and tag line "AVON - the company for women". Respondent's web page bears

pictures of Avon products, the name and tag line and a picture of Complainant's

corporate headquarters in New York (Complainant Exhibit L).

5.7 A document entitled "The Avon Agreement", a partial translation of which

is exhibited to the Response as Response Exhibit A and to Complainant's Supplemental

Material as Exhibit A, is the only document produced by either party purporting

to regulate the relationship between Complainant and/or its Japanese subsidiary

and Respondent. That Agreement states that:

"4. When an Avon Lady engages in the sale of Avon Products,

she shall use the title "Avon Lady". An Avon Lady can use items other than the

sale promotion materials prepared by Avon for sales of Avon Products, by receiving

advance permission in writing from Avon.

5. The Avon Lady is not subject to any restrictions in her relationship with

Avon, and she is neither an employee, nor the agent or travelling sales person

of Avon. The Avon Lady and Avon have no mutual obligation of any kind concerning

matters other than those recorded in this Agreement………"

5.8 Respondent asserts that she, Ms Lee, was granted by Avon Japan, non-exclusive

rights to sell "Avon" products in Korea and has received verbal permission and

sales materials from Hiroko Amemiya, "the manager-in-charge" and has incorporated

them on the <avonkorea.com> web site. (Response Exhibits E and F). Respondent

further asserts that she registered and is currently using the domain name with

the verbal permission of Avon Japan.

5.9 Complainant, by its Supplemental Material, denies each of Respondent's

assertions in para. 5.8 and produces a sworn declaration from Hiroko Amemiya

stating that:

"3. Contrary to her assertions, I have never granted Jong-Seon Lee, either

orally or in writing, permission to sell AVON products in Korea. Nor have I

granted her oral or written permission to register the avonkorea.com

domain name or to sell AVON products via the Internet or to use the AVON trademarks

for such purposes. In fact, Jong-Seon Lee has never approached me with such

requests for permission, and we have had no communications regarding such requests.

4. Moreover, as the Division Sales Manager of a small geographical area in

western Tokyo, Japan, I do not have the authority to grant Jong-Seon Lee the

permissions that she claims I granted. I do not have the authority to grant

any person permission to sell AVON products in Korea, to sell AVON products

via the Internet or to register domain names incorporating the AVON name and

trademark. Nor do I have the authority to grant permission to Jong-Seong Lee

or any other person to use the AVON trademarks. "

Complainant also produces a sworn declaration from the Group Director of Sales

of Avon Japan, Kimiko Horii, stating that:

"3. Hiroko Amemiya is a Division Sales Manager of sales districts in western

Tokyo, Japan. There are 92 such sales districts in Tokyo along and 584 more

such sales districts within Japan. Thought she is employed by Avon Products,

Co., Ltd., Hirolo Amemiya is not invested with the power or authority to grant

Jong-Seon Lee, or any other person, permission to sell AVON products in Korea,

to sell AVON products via the Internet or to register domain names, such as

avonkorea.com, incorporating the AVON name and trademark. Neither is

she invested with the power to grant permission of Jong-Seon Lee or any other

person to use AVON trademarks and copyrighted images for such purposes.

4. Avon Products, Co., Ltd. has never given permission to Jong-Seon Lee to

sell AVON products in Korea, to sell AVON products via the Internet or to register

domain names, such as avonkorea.com, incorporating the AVON name and

trademark. Neither has Avon Products, Co., Ltd. granted permission to Jong-Seon

Lee or any other person to use AVON trademarks and copyrighted images for such

purposes. In fact, Avon Products, Co., Ltd. does not have the power to grant

such permissions. The only corporate entity that could grant such permissions

is the United States-based Complainant, Avon Products, Inc., the owner of the

AVON trademark. "

5.10 Respondent by her Reply re-asserts her previous claims and contests the

evidence of Ms Amemiya. She also directs attention to other registered domain

names which include the word "Avon". Respondent also accuses Complainant of

intimidation and "Domain Name and Business Hijacking".

6. Applicable Dispute

6.1 This dispute is one to which the Policy applies. By registering the domain

name, Respondent accepts the dispute resolution policy adopted by the Registrar.

The Registrar's current policy set out in its domain name registration agreement

is the Policy.

6.2 To succeed in its Complaint, Complainant must show that each of the conditions

of paragraph 4(a) of the Policy are satisfied, namely that:

(i) the domain name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in the domain name;

and

(iii) the domain name has been registered and is being used in bad faith.

7. Parties' Contentions

A. Complainant

7.1 Complainant contends that it is the owner of the trade mark "Avon", that

its mark is famous worldwide, and that the domain name is identical or confusingly

similar to that trade mark. Complainant contends that the word "Avon" is the

dominant distinctive portion of the domain name, and that a finding of confusing

similarity cannot be escaped by the addition of a geographic designation. Complainant

cites Case D2000-0150 - Wal-Mart Stores,

Inc. v. Walmarket Canada ,and Case D2000-0071

– CSA International v. John O.Shannon and Care Tech Industries, Inc.

7.2 Complainant contends that Respondent has no rights or legitimate interests

in the domain name. Complainant does not contest that Respondent is an "Avon

Lady" authorised to sell Avon Products in Japan. Complainant contends that as

one of over 800,000 such persons she is not entitled to claim any rights or

interests in the domain name, and denies that it ever authorised Respondent

to register the domain name, to modify any of its materials or to use them on

her web site.

7.3 Complainant contends that it has direct evidence that Respondent has registered

and is using the domain name in bad faith and that Respondent's web site is

designed to confuse Internet users into believing the web site is authorised

by Complainant. Complainant contends that:

"Respondent's intent in registering and using the Domain Name is to create

confusion and divert web traffic for his own benefit is confirmed by the way

Respondent has designed his AVONKOREA.COM web site. Apart from using the confusingly

similar Domain Name, Respondent has exacerbated the likelihood of consumer confusion

by (i) featuring the AVON name and mark on its web site, (ii) copying Complainant's

AVON logo and well-known tagline, "the company for women," (iii) reproducing

many of the salient elements of Complainant's official AVON.COM web site and

country-specific web sites, and (iv) selling AVON products on the web site.

Compare Exhibits J and K with Exhibit L. Overall, one glimpse of Respondent's

web site makes it clear that Respondent has unmistakably set out to confuse

the public into thinking that it is the authorized seller of AVON products in

Korea, which it is not."

B. Respondent

7.4 Respondent contends that, based on the fact that she is an "Avon lady"

in Japan, and the verbal permission allegedly given to her, she has a legitimate

interest in the use of the domain name in the furtherance of her business in

Korea and that her registration and use has been in good faith and without any

intention of confusing the public.

8. The Panel's Findings

Status of Respondent

8.1 As pointed out in paragraph 5.4 the person appearing as the registrant

of the domain name, and therefore the Respondent in these proceedings, is not

the person who is using the domain name and who responded to the Complaint.

There is therefore a preliminary question as to whether the Panel should deal

with the matter on the basis that Ms Lee is the true Respondent and that Mr.

Jongsoo Lee is merely her nominee for the purpose of holding the domain name.

On a strict construction of the Policy Mr. Jongsoo Lee should be the Respondent

and the matter should be dealt with only on the basis of his conduct. However,

to do so would be to ignore the reality of the situation and would appear to

run counter to the practice of Panelists in previous cases. Nominee registrants

have been involved in several previous cases including Imperial College v.

Webweaver – Case D2000-1146; Investissement

Marius Saradar S.A.L. v. John Naffah – Case

D2000-0853, Cellular One Group v. The Design Factory – Case

D2000-1670 and Computer Futures Recruitment v. Keith Phillips – Case

AF-0106, and in each of those cases the Panel has had regard to who it was who

had the substantive interest in the domain name.

The Panel therefore proceeds on the basis that the true Respondent is Ms Lee.

The Panel notes however, that the final outcome would not have been different

had it treated Mr. Jongsoo Lee as the Respondent.

Identical of Confusingly Similar Trade Mark

8.2 Complainant's "Avon". trade mark is widely used and registered throughout

the world. It is a famous mark in which Complainant clearly has rights. The

domain name adopts that famous mark with the addition of the geographic designation

"korea". The domain name therefore appears to be a localised sub-set of the

famous mark and is likely to be confused with it.

The Panel therefore finds that the domain name is confusingly similar to Complainant's

"Avon" trade mark and paragraph 4(a)(i) of the Policy is satisfied.

Rights and Legitimate Interests

8.3 There is a clear conflict of evidence as to whether or not Respondent was

authorised to sell "Avon" products in Korea, to adapt and use Complainant's

trade mark and copyright material on her web site and to use and register the

domain name in connection with such activity. The Panel has no opportunity to

test the evidence on the record or to cross examine or observe the demeanour

of the witnesses. On the Respondent's side is her own assertion, under oath

in the case of her Supplemental Reply, and on the Complainant's side there is

the sworn testimony of two corroborating witnesses. In these proceedings the

onus is on Complainant to make out its case under paragraph 4 of the Policy.

The Panel recognises that where there is a language difference between the parties

misunderstandings may arise. The Panel takes this into account but is of the

opinion that it is unlikely that a corporation of the size and experience would

voluntarily permit one of its multitude of sales representatives to appropriate

its trade mark into a domain name or to adapt and use its trade marks and copyright

material. On the balance of probability therefore the Panel accepts the evidence

of Complainant.

8.4 That, however, does not conclude the question. Paragraphs 4(c)(i) of the

Policy is in fact a deeming provision and accordingly if, before notice of the

dispute, Respondent was using the domain name in connection with the bona

fide offering of goods or services, a legitimate right or interest must

be found. Complainant does not dispute that Respondent was using the domain

name in connection with the offering of its goods. The question is, whether

that offering was bona fide. Considered in the abstract, there is nothing

on the record to show that Respondent's offering of goods, as such, was not

bona fide. However, in the context of the Policy, it is necessary to

consider the totality of the transaction including the use in that context of

the domain name and of the right to use Complainant's trade mark and copyright

material. As noted above, there is a conflict of evidence in this regard but

the Panel accepts the evidence of Complainant.

The Panel therefore finds that Respondent has not used the domain name in connection

with the bona fide offering of her goods or services. Respondent therefore

has no rights or legitimate interest in the domain name.

Bad Faith Use and Registration

8.5 Inspection of Respondent's web site (Complainant Exhibit L) featuring as

it does Complainant's trade mark, logo, tag line and a picture of Complainant's

corporate headquarters, clearly indicates an attempt by Respondent to suggest

authorisation by, or affiliation with, Complainant. Not only is the domain name

likely to attract users of the Internet to the site in the belief that it is

Complainant's site, or associated with it, but the deception is continued once

the site is reached.

The Panel therefore finds that Respondent has, by using the domain name, intentionally

attempted to attract, for commercial gain, users to her web site by creating

a likelihood of confusion with Complainant's "Avon" trade mark as to the source,

sponsorship, affiliation or endorsement of her web site. The provisions of paragraph

4(b)(i) of the Policy are therefore satisfied and registration and use of the

domain name in bad faith is established.

9. Decision

9.1 The Panel decides and orders:

(i) The domain name is identical or confusingly similar to a trade mark in

which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain

name;

(iii) The domain name has been registered and is being used in bad faith;

(iv) The domain name should be transferred to Complainant.

D.J. Ryan

Sole Panelist

Dated: May 22, 2001

ATTACHMENT A

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL

PROCEDURAL ORDER NO. 1

Avon Products, Inc. v. Jongsoo Lee

Case No. D2001-0272

Complainant's Request to File Supplemental Material

1. In this matter Complainant seeks to file further material in reply to the

Response. The reply material is directed principally to matters relating to

the contractual relationship between Respondent and Complainant or its Japanese

subsidiary and certain matters of translation of Japanese and Korean language

materials relied upon by Respondent.

2. The Panel, having reviewed the Complaint and the Response and proposed supplementary

material is of the opinion that the material will be of assistance to the Panel

in deciding the matter.

3. Parties may be permitted to file further material only in exceptional circumstances

– see for example Rapido TV v. Jan Duffy-King – D2000-0449,

such as where the Response raises matters which Complainant could not reasonably

foresee at the time of filing the Complaint, or new material which has since

come to hand. The proposed Supplemental Material goes to matters of evidence

which Complainant could not reasonably have foreseen at the time of preparation

of the Compliant.

4. The Panel therefore exercises its discretion pursuant to Rules 10(a) and

12 of the Rules and admits the supplementary material.

The Panel orders:

1. Complainant's Supplemental Material filed April 9, 2001 is admitted.

2. If not already served, copies of the Supplemental Material to be served

on Respondent forthwith.

3. Respondent to file Reply to the Supplemental Material by April 27, 2001.

4. Such Reply to be by declaration on oath.

Des Ryan

Sole Panelist

Dated: April 12, 2001

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