Claim Number: FA1004001319963
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise
R. Blakeslee, of Sequel Technology & IP Law, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriassecretcloset.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2010.
On April 19, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcloset.com> domain name is registered with Godaddy.com, Inc. and that 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 April 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2010 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, and to postmaster@victoriassecretcloset.com by e-mail. Also on April 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the manufacturer and distributor of women’s lingerie, clothing, swimwear, outerwear and personal care and beauty products throughout the world.
Complainant owns several trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for its
Respondent registered the disputed domain name on February 14, 2009.
Respondent has not been authorized to use Complainant’s mark, and Respondent is not commonly known by the disputed domain name.
Respondent’s domain name resolves to a website offering “gently worn and never been worn designer wear” products for women in competition with Complainant’s products.
Respondent’s <victoriassecretcloset.com>
domain name is confusingly similar to Complainant’s
Respondent does not have any rights or legitimate interests in the domain name <victoriassecretcloset.com>.
Respondent registered and uses the contested <victoriassecretcloset.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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 or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its
The disputed domain name contains Complainant’s mark in its
entirety, absent the apostrophe and space which are not allowed in a domain
name. The disputed domain name also adds
the generic term “closet” to Complainant’s mark along with the generic
top-level domain (“gTLD”) “.com.” The
term “closet” refers to Complainant’s clothing products, while the additions
and subtractions made to Complainant’s mark in forming the contested domain
name, taken together, do not distinguish the domain
name from the mark for purposes of the Policy.
Respondent’s <victoriassecretcloset.com>
domain name is therefore confusingly similar to Complainant’s
The
lack of an apostrophe in the domain name is not a distinguishing difference
because punctuation is not significant in determining the similarity of a
domain name and a mark.
Moreover, see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <victoriassecretcloset.com> domain name. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights to or legitimate interests in the <victoriassecretcloset.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
See also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008): “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”
Complainant has produced a prima facie case under this head of the Complaint. Owing to
Respondent’s failure to respond in these proceedings, we may therefore presume that
Respondent does not have any rights to or legitimate interests in the disputed
domain name. See, for example, Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests in a contested domain name where a respondent failed to respond to a complaint filed under the Policy). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant argues, and
Respondent does not deny, that Respondent has not been authorized to use
Complainant’s mark and that Respondent is not commonly known by the disputed domain
name. Therefore, and although the WHOIS
information for the <victoriassecretcloset.com>
domain name identifies the registrant as “victoriassecrectcloset.com” and
“Victoria Borjesson” as the administrative contact for the disputed domain name,
we conclude that Respondent is not commonly known by the disputed domain name so
as to have demonstrated that it has rights to or legitimate interests in the
contested domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20,
2007) (finding that although a respondent listed itself as “AIM Profiles” in its
WHOIS contact information, there was no other evidence in the record to suggest
that that respondent was actually commonly known by the domain name there in
issue); see also Xerox Corp. v. Anti-Globalization
Domains, FA 210224 (Nat. Arb. Forum Dec.
22, 2003): “[I]t would be difficult for Respondent to demonstrate that it had
rights or legitimate interests in the domain name given Complainant's long and
substantial use of its unique and famous XEROX mark.”
Respondent also does not deny the allegation of the
Complaint that the contested domain name resolves to a website offering women’s
clothing and related items for sale in competition with the business of Complainant. In the circumstances here presented, we may
presume that Respondent is evidently capitalizing on the confusing similarity
between Complainant’s mark and the disputed domain name for its commercial gain,
in the form of click-through fees or otherwise.
Respondent’s use of the disputed domain in the manner alleged is not a
use in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003): “Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.” See also, to the same effect, DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002):
Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.
Therefore, the Panel finds that
Respondent lacks rights to and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii).
Respondent’s use of the <victoriassecretcloset.com> domain name to divert Internet users from Complainant’s official <victoriassecret.com> website to Respondent’s own website that displays competing women’s clothing and products for sale results in disruption of Complainant’s business, and is therefore evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent
is appropriating Complainant’s mark to divert Complainant’s customers to
Respondent’s competing business. The
Panel finds this diversion is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).
See also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the domain name <classicmetalroofing.com> in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing business website).
Respondent’s use of the <victoriassecretcloset.com> domain name to offer competing products for sale in the manner alleged in the Complaint has the potential to mislead Internet users as to the source and affiliation of the website, a confusion from which Respondent evidently seeks to acquire commercial gain. This is evidence of Respondent’s bad faith registration and use of the <victoriassecretcloset.com> domain name under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s illustrates that respondent’s bad faith registration and use of the domain name, and constitutes evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith registration and use of a domain name where a respondent used the domain, for commercial gain, to attract Internet users to the website of a business competitor of a complainant).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <victoriassecretcloset.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 2, 2010
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