National Arbitration Forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Russell Adams

Claim Number: FA0910001291439

 

PARTIES

 

Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington D.C., USA.  Respondent is Russell Adams (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <freevictoriasecretsoffer.info>, registered with GoDaddy.com, Inc.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 28, 2009.

 

On October 27, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freevictoriasecretsoffer.info> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@freevictoriasecretsoffer.info by e-mail.

 

A timely Response was received and determined to be complete on November 11, 2009.

 

On November 12, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

This Complaint is based upon Complainant long-time use and irrefutable ownership of the VICTORIA’S SECRET marks since at least 1977.  Complainant alleges it holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., 1,146,199 issued January 20, 1981), duly proved under the Exhibits enclosed in the Complaint. Complainant likewise relies herein on its extensive promotion and advertisement of its marks and the products linked with it, which deems sufficient enough to invoke protection.

 

In that sense, Complainant basic contentions are as follows:

 

1.      The domain name that Respondent registered <freevictoriasecretsoffer.info> is confusingly similar to Complainant’s mark registrations supported and provided under exhibits “of the Complaint.” Respondent’s Domain Name is Identical or Confusingly Similar to Complainant’s trademarks. The Respondent infringes upon and violates the Complainant’s rights under ICANN Policy and the Respondent should have known that VICTORIA’S SECRET marks were registered and notorious trademarks.

 

2.      Respondent has no rights to or legitimate interests in the domain name in dispute. Furthermore, Complainant submits that because of the widespread renown, use, promotion, distribution and advertisement by Complainant of its marks and in particular, Complainant’s stores along the United States of America, Respondent knew or should have known of Complainant’s rights in the marks, and the valuable goodwill represented and symbolized thereby when it registered the domain name <freevictoriasecretsoffer.info>.

 

3.   Respondent registered and uses the disputed domain in bad faith. The prior, as logical consequence of the previous contentions and thus, Complainant argues that Respondent’s Registration of the Domain Name should be considered as having been registered and being used in bad faith and according to the ICANN rule 3 (b) (ix) (3), the Complainant claims that the Respondent had an affirmative obligation to not register domain names that could violate any registered service or trademark.

 

The Complainants requests that the Panel issues a decision that the domain-names be transferred.

 

B. Respondent

 

Respondent has admitted in his response to the complaint that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. 

 

FINDINGS

 

Respondent consents to transfer the <freevictoriasecretsoffer.info> domain name to Complainant.  However, after the initiation of this proceeding, GoDaddy.com, Inc. placed a hold on Respondent’s account and therefore Respondent is not allowed to transfer the disputed domain name while this proceeding is still pending.  As a result, the Panel considers that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, it is decided to forego the traditional UDRP analysis and order an immediate transfer of the  <freevictoriasecretsoffer.info> domain name.

[1] 

 

Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy[2].

 

The Panel has decided to accept the Response in making its decision, and notes that Respondent has chosen not to challenge any of Complainant’s assertions but, rather, to agree to transfer the disputed domain name to Complainant in satisfaction of Complainant’s requested remedy. Therefore, under such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names. Several Panels have reached the very same conclusion when ruling similar cases: (See for example Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004).

 

DISCUSSION

 

Regardless of the foregoing facts, even though the decision of the Panel will be necessarily to transfer the domain name in dispute in favor of Complainant for the aforementioned reasons, and although the Panel has decided that Respondent has explicitly consented on its answer with the terms of the complaint even without a decision on the merits, the Panel deems crucial to point out the following findings made on his behalf:

 

·               In this case, the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them, which makes it necessary for arbitrators to issue decisions not only ordering the transfer, but also convicting, reproving and condemning such behaviors.[3]

 

·               As required by Policy, the Panel finds that the 3 elements of the Policy are met, due to the following considerations:

 

Identical and/or Confusingly Similar

 

The Domain Name, freevictoriasecretsoffer.info, is confusingly similar to Complainant’s marks VICTORIA’S SECRET as well as to the domain name used by Complainant in connection with the legitimate sale of products bearing the VICTORIA’S SECRET Marks, namely victoriassecret.com. The Domain Name freevictoriasecretsoffer.info incorporates Complainant’s VICTORIA’S SECRET mark in its entirety, absent the apostrophe and space (which cannot be included in a domain name) and with the deletion of the “s” in “VICTORIA’S” and addition of an “s” after “SECRET.”  The domain name merely prefaces the mark with the word “free” and appends the word “offer.”  By registering a domain name that merely adds the words “free” and “offer” to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. 

 

Rights or Legitimate Interests

 

The site included within the disputed domain, displays the VICTORIA’S SECRET Marks and copyrighted photographs taken from the genuine VICTORIA’S SECRET website, all without Complainant’s permission. Respondent is using the Domain Name to attract visitors to its Site in order to collect their personal information and promote the goods and services of businesses other than Complainant. Respondent is using the Domain Name to confuse consumers and to divert them from the legitimate VICTORIA’S SECRET web site to its own for commercial gain.  Such usage of Complainant’s mark to divert Internet traffic to a web site that promotes goods or services unrelated to Complainant and derive revenue there-from does not constitute use in connection with a bona fide offering of goods or services.[4]  

 

Registration and Use in Bad Faith

 

Respondent is using Complainant’s VICTORIA’S SECRET Marks in the Domain Name to drive traffic to Respondent’s Site, which gathers personal information from visitors and promotes the goods and services of various businesses unrelated to Complainant.  Thus, Respondent registered the Domain Name with the intent to attract Internet users to its Site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Domain Name and Site, thereby misleadingly diverting Internet traffic from Complainant’s web site to Respondent’s for commercial gain.  This use of the Domain Name indicates that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on [Respondent’s] web site or location.

 

DECISION

 

Having established and determined that the requests of the parties in this case are identical, in that the Respondent does not contest Complainants’ remedy, and also that the 3 elements of the Policy are duly met, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <freevictoriasecretsoffer.info> domain names be TRANSFERRED from Respondent to Complainant

 

 

 

 

FERNANDO TRIANA, Esq.

 Panelist
Dated:  November 30, 2009

 

 

 

National Arbitration Forum