Victoria’s Secret Stores Brand Management, LLC v. James Bushell
Claim Number: FA2203001987526
Complainant is Victoria’s Secret Stores Brand Management, LLC (“Complainant”), represented by Matthew Mills of ArentFox Schiff LLP, District of Columbia, USA. Respondent is James Bushell (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretmetaverse.com>, registered with Google LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2022; the Forum received payment on March 9, 2022.
On March 9, 2022, Google LLC confirmed by e-mail to the Forum that the <victoriassecretmetaverse.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2022, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, as well as to the attention of postmaster@victoriassecretmetaverse.com. Also on March 11, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the most recognizable lingerie brand in the United States and a leading specialty retailer of women’s lingerie, prestige fragrance, body care, accessories and athletic and lounge wear globally.
Complainant holds a registration for the VICTORIA’S SECRET trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,908,042, registered August 1, 1995, and renewed most recently as of November 12, 2015.
Respondent registered the domain name <victoriassecretmetaverse.com> on November 30, 2021.
The domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
On February 8, 2022, Complainant publicly signaled its intent to enter the marketing “metaverse” by filing trademark applications for VICTORIA’S SECRET for metaverse-related goods and services.
While media coverage of this intention was circulating widely, Respondent, on February 15, 2022, sought to enter into negotiations with Complainant for the sale of the domain name to Complainant.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the VICTORIA’S SECRET domain name in any way.
Respondent fails to make either a bona fide offering of goods or services by means of the domain name or a legitimate noncommercial or fair use of it.
Instead, Respondent resolves the domain name to an inactive webpage.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent had actual knowledge of Complainant’s rights in the VICTORIA’S SECRET mark when it registered the domain name.
Respondent has both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the VICTORIA’S SECRET trademark and service mark sufficient to demonstrate standing to pursue its Complaint in this proceeding under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum August 3, 2015) (finding that a UDRP complainant’s registration of its mark with the USPTO adequately proved its rights under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here United Kingdom). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <victoriassecretmetaverse.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The domain name incorporates the mark in its entirety, with only elimination of the space between its terms and the addition of the generic term “metaverse,” which describes an aspect of Complainant’s marketing plan, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
See also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not sufficiently distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
And, as to Respondent’s deletion of the space between the terms of Complainant’s mark in creating the domain name, see, for example, Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum February 19, 2003):
…[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <victoriassecretmetaverse.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested domain name, and that Complainant has not authorized Respondent to use the VICTORIA’S SECRET mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “James Bushell,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts that Respondent registered the contested <victoriassecretmetaverse.com> domain name shortly before Complainant publicly revealed its intent to enter the marketing “metaverse” by filing trademark applications for the mark VICTORIA’S SECRET for metaverse-related goods and services, and that while media coverage of this intention was circulating widely, Respondent sought to negotiate with Complainant for the sale of the domain name to Complainant, and, finally, that Respondent has made no other use of the domain name. Respondent does not deny these assertions. It is thus evident that Respondent’s aim in registering the domain name was solely to profit from the sale of it to Complainant by prospectively threatening to prevent Complainant from reflecting its mark in a corresponding domain name in keeping with its new business plan.
The opportunistic effort made by Respondent to sell to Complainant a domain name that is both confusingly similar to Complainant’s VICTORIA’S SECRET trademark and service mark and demonstratively reflective of an intent to extract profit from Complainant tracing directly to its freshly announced “metaverse” business plan cannot be reckoned either “a bona fide offering of goods or services” within the contemplation of Policy ¶ 4(c)(i) or “a legitimate noncommercial or fair use” under Policy 4(c)(iii). See, for example, Telstra Corp. Ltd. v. Mr. Jeon, D2001-1161 (WIPO November 28, 2001):
In this case, there is no evidence of the Respondent using the domain name for a bona fide offering of goods or services [as provided in Policy¶4(c)(i)], and nor is there any evidence of preparations for such a use…. The only "use" which the Respondent appears to have made of the domain name, has been, within one month after the domain name was registered, to offer it for sale to the Complainant.
* * * * *
… [And, for the reasons just noted,] … [t]hat could not constitute a legitimate or fair use of the domain name [under Policy¶ 4(c)(iii)].
The Panel therefore finds that Complainant has satisfied the requirement of Policy ¶ 4(a)(ii) that it show that Respondent lacks rights to and legitimate interests in the disputed domain name.
Essentially the same considerations that inform our conclusion that Respondent has no rights to or legitimate interests in the challenged domain name are pertinent to the final question before us, viz.: whether Respondent has registered and is using the domain name in bad faith. We return, then, to Telstra Corp. Ltd. v. Mr. Jeon, supra, where the panel further found as follows:
In this case, the Respondent wrote to the Complainant only one month after the domain name was registered, … and inquired whether the Complainant was interested in purchasing the domain.
The very choice of an invented word such as "Telstra", in combination with an acronym denoting a corporation with which the Complainant has a business alliance, makes it clear … that the Respondent was well aware of the Complainant and … [its mark] … at the time he registered the domain name. The Respondent made no use of the domain name within the first month after registration, and at the end of that month, approached the Complainant attempting to sell the domain name to it.
In … those circumstances, the Panel has little difficulty in concluding that the domain name was registered primarily for the purpose of selling it to the Complainant. The Complainant is the owner of the trademarks / service marks to which the Panel has found that the domain name is confusingly similar, and the only remaining matter under paragraph 4(b)(i) of the Policy is whether the Respondent has sought to obtain a valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
The Respondent did not mention any proposed sale figure in his … email, but it is clear that he had in mind more than the simple recovery of his out-of-pocket expenses.
* * * * *
In summary, the combination of the choice of a domain name which could only have been chosen because of its similarity with the Complainant’s marks, the Respondent’s failure to use the domain name, the offer to sell for profit to the Complainant within one month after registration, … [among other considerations] … persuade the Panel that the domain name has been registered and is being used in bad faith.
The facts before us vary from those in Telstra only in minor details. Here Respondent registered its domain name, consisting of Complainant’s entire VICTORIA’S SECRET mark and the term “metaverse,” which, not coincidentally, was the centerpiece of a new marketing undertaking by Complainant made public very shortly thereafter. And, tellingly, Respondent waited only days after Complainant’s news had broken to make contact for the purpose of selling it the domain name. That Respondent expected to extract from Complainant a profit substantially in excess of its costs to register the domain name is obvious from the circumstances, not least among them the fact that Respondent had positioned itself to prevent Complainant from reflecting the term “metaverse” in a corresponding domain name in pursuit of its new business plan. The conclusion that Respondent both registered and now uses the domain name in bad faith within the meaning of Policy ¶ 4(b)(i) flows inevitably from these facts.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is hereby Ordered that the <victoriassecretmetaverse.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 7, 2022
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