Respondent Had Rights or Legitimate Interests in Domain Name by Using It to Promote Genuine Business

By Evan D. Brown
Evan D. Brown

In the case of Avon Products, Inc. v. Jenika Mukoro, Heirs Holdings, a 3-member WIPO Panel denied the Complainant's efforts to have the domain name <> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name.

The Panel found that the Complainant proved that its trademark AVON (which has been in use since 1929) 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. The Panel also found that it was 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.

But the Respondent provided convincing evidence to demonstrate that it was using the disputed domain name to promote a genuine business in the field of healthcare services and that it had 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 submitted certificates of incorporation 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.

So the Panel found 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. The Panel also gave attention to the list of 106 occurrences submitted by the Respondent of the term "Avon" to be in wide use, and corresponding 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 found that the Respondent had proven that it had 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 found that the Respondent had 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.

By Evan D. Brown, Attorney. Evan focuses on technology and intellectual property law. He maintains a law & technology focused blog called Internet Cases and is a Domain Name Panelist with the World Intellectual Property Organization deciding cases under the UDRP.

Related topics: Domain Management, Domain Names, Brand Protection, Law