Saturday, 22 September 2018

Nigerian ICT Lawyer Wins Landmark WIPO Arbitration Decision Against US Based Global Brand AVON

A leading Nigerian law firm led by Barr Basil Udotai has won a landmark case in the WIPO Arbiration court.

The Complainant is Avon Products, Inc. of New York, New York, United States of America, represented by Adams & Adams Attorneys, South Africa.


The Respondent is Jenika Mukoro, Heirs Holdings, of Lagos, Nigeria, represented by Technology Advisors LLP, Nigeria.

The disputed domain name <avonhealthcare.com> is registered with eNom, Inc. (the “Registrar”).

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2018. According to paragraph 5(b) of the Rules, the Response due date was extended until July 2, 2018. The Response was filed with the Center on July 2, 2018.

The Center appointed Luca Barbero, Clive N.A. Trotman, and Ike Ehiribe as panelists in this matter on August 7, 2018. The Panel finds that it was properly constituted. Each member of 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.

Factual Background: The Complainant is a United States company, founded in 1886, that operates as direct seller of cosmetics, beauty and personal care products, medicated skincare products, and also vitamin and supplement products.

The Complainant made first commercial use of the trademark AVON on September 1, 1929, in the United States and currently uses the trademark in relation to its vast array of goods and services in more than 137 countries worldwide.

The Complainant’s trademark AVON was ranked amongst the “100 Best Global Brands” by Interbrand in 2013 and was rated under the 100 most powerful brands by Tener Partners, CoreBrand, in 2017.

The Complainant’s stock is publicly traded on the New York Stock Exchange. Its reported total revenue was USD 5.7 billion dollars in 2016 and its total sales in the same year amounted to USD 5.5 billion dollars.

The Complainant’s offer of healthcare and wellness products is currently the largest product category in the Complainant’s direct selling channel, representing 33.5 percent of its total sales. Besides offering medicated skincare products under the trademark AVON, the Complainant recently launched a line of health and wellness products under the brand name ESPIRA BY AVON.

The Complainant also engages in charitable and philanthropic activities aimed at promoting a wide range of issues related to women’s health and wellness. Amongst others, it is supporting breast cancer causes with donations and campaigns including in African countries, such as South Africa, where it has hosted its annual walkathon for more than a decade.

The Complainant’s AVON products have been advertised and commercialized in Africa, including in Nigeria, and the Complainant has offices in Egypt and South Africa.

The Complainant is the owner of over 4,000 trademark registrations in 118 countries of the world, including in Nigeria. Amongst others, the Complainant is the owner of Nigerian trademark registrations for the word mark AVON filed on May 11, 2010, registered on April 6, 2011, and duly renewed, in classes 3, 9, 14, 18, 25, 35, 38, 41, and 42, as highlighted in Annexes M to the Complaint.

The Complainant operates its main website at the domain name <avon.com>, registered on March 1, 1996, at which it promotes and offers for sale its AVON products. The Complainant also owns additional domain names including the trademark AVON, such as <youravon.com>, registered on May 15, 2000, <shopavon.com>, registered on June 6, 2002, and <avon.co.za>, registered on December 17, 1998.

The Respondent is a Nigerian investment company with a portfolio spanning across power, oil and gas, financial services, hospitality, real estate, and healthcare sectors. It is the holding company of Avon Healthcare Limited, a health management organization (HMO) registered since 2012 with the National Health Insurance Scheme (NHIS), the regulatory agency overseeing the Nigerian health industry and operating as of 2013.

The disputed domain name <avonhealthcare.com> was registered on August 21, 2012, and is pointed to a website promoting healthcare services provided by the Nigerian company Avon Healthcare Limited.

Parties’ Contentions

The Complainant contends that the disputed domain name is confusingly similar to its registered trademark AVON, since it encompasses its distinctive and well-known trademark with the mere addition of the descriptive element “healthcare” and the Top-Level domain “.com”. The Complainant also states that the addition of the said suffix increases the likelihood of confusion between the disputed domain name and the Complainant’s trademark, which has been used for several years also in connection with cosmetics, beauty, health and healthcare products.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because:

– the Complainant has not granted authorization or permission to the Respondent to register or use the disputed domain name and there is no business relationship between the Complainant;

– due to the international renown of the Complainant’s well-known trademark AVON, there can be no rights or legitimate interests by the Respondent in the disputed domain name;

– the Respondent registered the disputed domain name to exploit the extensive goodwill associated with the Complainant’s well-known trademark AVON for commercial gain;

– the Respondent is not using the disputed domain name in connection with a bona fideoffering of goods or services, since the existence of the disputed domain name is likely to take unfair advantage of and be detrimental to the distinctive character and reputation of the Complainant’s well-known trademark AVON;

– the Respondent has no trademark rights consisting of the trademark AVON and has not been commonly known before the Complainant registered its trademark AVON internationally and in Nigeria;

– the disputed domain name is not being used in connection with a legitimate noncommercial or fair use since it redirects users to a website that is clearly designed to attract customers for commercial gain and is apt to divert traffic intended for the Complainant to the Respondent’s website, by causing confusion with the Complainant and its products;

– searches on the Internet and at the Nigerian Registry would have easily revealed the Complainant’s prior use and registration of the trademark AVON;

– the registration of the disputed domain name on behalf of the company Avon Healthcare Limited would not be sufficient to claim a legitimate interest.

The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith to benefit from the extreme goodwill and reputation associated with the Complainant for the following reasons:

– the disputed domain name, including the trademark AVON, was registered more than a century after the trademark was adopted by the Complainant and became internationally famous, including in Nigeria;

– in view of the fame and worldwide renown of the trademark AVON, it is inconceivable that the Respondent was unaware of the Complainant’s trademark;

– the Respondent’s registration and use of the disputed domain name creates a risk of confusion and promotes a business not authorized by the Complainant, which does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use;

– the Respondent registered the disputed domain name with the intention of attracting users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website;

– the Respondent is using on its website the logo “AVON HMO” which places more prominence on the “avon” portion of the logo, in order to take unfair advantage of the Complainant’s goodwill and reputation;

– the fact that the disputed domain name was registered by the Respondent and that the Complainant had to spend time, money and effort in bringing its Complaint is disruptive to the Complainant’s business;

– in view of the Complainant’s significant reputation in the field of healthcare products and its campaign to eradicate breast cancer, Internet users may mistakenly believe that the disputed domain name is connected to or associated with the Complainant;

– using a widely known trademark in connection with any offering of goods or services, whether or not they are competitive, without prior consent of the trademark owner, is a clear indication of bad faith.

The Respondent rebuts the Complainant’s contentions by preliminarily stating that the Complainant’s trademark AVON and associated products are not as popular in Nigeria as the Complainant suggests and that the Complainant and Avon Healthcare Ltd do not operate similar businesses and, therefore, there is no likelihood of confusion.

The Respondent informs the Panel that Avon Healthcare Ltd is one of the Respondent’s subsidiaries representing the Respondent’s interests in the Nigerian healthcare sector and that other subsidiaries include Avon Medical Practice Limited, Avon Health Support Service Limited, and Avon Clinics Limited, all of which are duly incorporated under the laws of Nigeria and are within the Respondent’s Avon Group.

The Respondent claims that the Complainant does not have exclusive rights over the term “Avon” since many rivers, cities, townships, businesses, products and services use the name “Avon” all over the world.

The Respondent states that the name Avon used for all the Respondent’s healthcare related investments was derived from the maiden name of the founder Awele Vivien Ogbue Nwamaka, a registered medical practitioner of repute who practices professionally through Avon Medical Practice Limited, providing medical services with a network of hospitals, clinics, dialysis centers, and laboratories across Nigeria, offering services such as gynecology, obstetrics, general surgery, orthopedic surgery, and psychotherapy.

With reference to the Complainant’s alleged confusing similarity of the disputed domain name with its trademark AVON, the Respondent asserts that the Complainant’s trademark AVON is not so similar to the disputed domain name as to create confusion amongst online consumers of the Respondent’s products, since there are no similarities in the markets in which the parties operate.

The Respondent states that it has been using the disputed domain name in connection with a bona fide offering of goods or services since it is using it in association with the legitimate, thriving business of Avon Healthcare Limited, which cannot be mistaken for any of the Complainant’s cosmetic products or vitamin supplements and derives its name from the initials of its founder.

The Respondent also submits that Avon Healthcare Limited is commonly known as a thriving health insurance business and also commonly known by the disputed domain name in relation to its bona fide business of providing healthcare services in the Nigerian market.

The Respondent further contends that the Complainant has not discharged its burden of proving that the Respondent registered and used the disputed domain name in bad faith.

Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark AVON based on the several trademark registrations cited under section 4 above and the related trademark details and registration certificates submitted as annexes to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of a descriptive term does not prevent a finding of confusing similarity under the first element (Section 1.8 of the WIPO Overview 3.0).

The Panel notes that the disputed domain name reproduces the trademark AVON in its entirety with the addition of the descriptive term “healthcare”, which is insufficient to exclude confusing similarity and the Top-Level domain “.com” can be disregarded under the first element confusing similarity test, being a standard registration requirement.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.

The Complainant has proved that its trademark AVON is well-known in the field of cosmetics and has been used also in connection with the sales of vitamins and supplements as well as to support breast cancer campaigns. Based on the records, it is also clear that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent’s use of its trademark AVON or the registration and use of the disputed domain name.

However, the Respondent has provided convincing evidence to demonstrate that it is using the disputed domain name to promote a genuine business in the field of healthcare services, and that it has been using the name AVON in connection with the health and medical services provided through its subsidiaries in Nigeria since as early as 2008. The Respondent has in fact submitted certificates of incorporations for Avon Healthcare Limited (dating back to 2010) and for other companies belonging to the Respondent’s “Avon group” which were incorporated between 2008 and 2009. In addition, the Respondent provided copies of company reports audited by Ernst & Young for the years 2013 and 2015, certificates of accreditation of Avon Healthcare Limited issued by the Nigerian health insurance controller, and printouts of online websites referring to the activities of the Respondent’s Avon group. Moreover, the Respondent also provided a plausible explanation as to the reason why the name “Avon” was selected for such activities, being the initials of the founder’s name.

Therefore, the Panel finds that, on balance of probabilities, the Respondent registered and used the disputed domain name to promote its own business without intending to trade off or exploit the Complainant’s trademark, which appears to be well-known in a different sector. (Moreover, as shown by the list of 106 occurrences submitted by the Respondent, the term “Avon” is in wide use and corresponds to the name of several rivers, towns and communities, as well as businesses and brands which do not operate in the same field of activity of the Complainant.)

In view of the above, and noting some limited online research to verify certain aspects of the Response, the Panel finds that the Respondent has proved that it has been using the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the present dispute. Moreover, based on the evidence submitted by the Respondent, the Panel also finds that the Respondent has demonstrated that the entity which actually uses the disputed domain name, i.e., Avon Healthcare Limited, has been commonly known by the disputed domain name.

The Complainant has thus failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

As highlighted in the paragraphs above, the evidence on record shows that the Respondent registered and is using the disputed domain name to advertise and offer the services provided by the company Avon Healthcare Limited, and that the selection and use of the disputed domain name was not intended to target the Complainant and exploit its trademark AVON.

Moreover, the Panel also notes that the logo published on the Respondent’s website and the layout of the same are not so similar to the Complainant’s logo and website as asserted by the Complainant.

In view of the foregoing, the Panel finds that the Complainant also failed to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.

For the previous reasons, the Complaint is denied.

The landmark arbitration case won at WIPO Arbitration Center by Technology Advisors, a leading Nigerian ICT Law Firm is a major because it marks a clear distinction between Trademark and Domain Name. Lawyers do not know that though related, trademarks are legally and technically distinguishable from domain names.

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