national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. Alicia Systems c/o Robert Jillie

Claim Number: FA1006001331448

 

PARTIES

Complainant is Victoria’s Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, PLLC, Washington D.C., USA.  Respondent is Alicia Systems c/o Robert Jillie (“Respondent”), New Hampshire, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretsgiftcard.com>, registered with ENOM, 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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2010.

 

On June 23, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretsgiftcard.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 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@victoriasecretsgiftcard.com.  Also on July 2, 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 August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

 

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 (the "Rules") "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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <victoriasecretsgiftcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <victoriasecretsgiftcard.com> domain name.

 

3.      Respondent registered and used the <victoriasecretsgiftcard.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria’s Secret Stores Brand Management, Inc., offers for sale women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered on January 20, 1981).

 

Respondent, Alicia Systems c/o Robert Jillie, registered the <victoriasecretsgiftcard.com> domain name on December 3, 2009.  The disputed domain name resolves to a website that purports to offer a “free” VICTORIA’S SECRET gift card and provides hyperlinks that connect to <myrewardscenter.us.com>.  The resolving website also prominently displays the VICTORIA’S SECRET mark.

 

DISCUSSION

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 the 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:

 

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

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

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

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the VICTORIA’S SECRET mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,146,199 registered on January 20, 1981).  The Panel finds these registration sufficiently prove Complainant’s rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Complainant contends Respondent’s <victoriasecretsgiftcard.com> domain name is confusingly similar to its VICTORIA’S SECRET mark.  In the disputed domain name, Respondent deletes the space between the words in Complainant’s mark.  Respondent then deletes an apostrophe and the letter “s” from the first word in Complainant’s VICTORIA’S SECRET mark.  Finally, Respondent adds the generic terms “gift” and “card” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds these alterations do not distinguish Respondent’s domain name from Complainant’s mark.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Consequently, the Panel finds Respondent’s <victoriasecretsgiftcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first establish Respondent lacks rights and legitimate interests in the <victoriasecretsgiftcard.com> domain name pursuant to Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to show it has rights or legitimate interests in the domain name under the Policy ¶ 4(c) factors.  See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  In the past, panels have found Respondent’s failure to submit a Response demonstrated a lack of rights or legitimate interests.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  Although Respondent has failed to respond to Complainant’s allegations, the Panel will independently evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant asserts Respondent is not affiliated with Complainant nor has Complainant given Respondent permission to use its VICTORIA’S SECRET mark in a domain name.  Additionally, the WHOIS information lists “Alicia Systems c/o Robert Jillie” as the registrant of the disputed domain name.  Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <victoriasecretsgiftcard.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant avers the disputed domain name resolves to a website that purports to offer a “free” VICTORIA’S SECRET gift card.  Screen shots of the resolving website show the VICTORIA’S SECRET mark prominently displayed throughout the site.  The site also contains the message “Just Go To the Website Answer a Yes or No Question and Enter Your Email!” and provides numerous hyperlinks that connect Internet users to a third-party website, <myrewardscenter.us.com>.  The Panel infers Respondent uses the <victoriasecretsgiftcard.com> domain name in order to collect referral fees each time an Internet user is rerouted to <myrewardscenter.us.com>.  Therefore, the Panel finds Respondent’s use does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

As previously discussed, the Panel finds Respondent’s <victoriasecretsgiftcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  In addition, Respondent’s resolving website prominently displays Complainant’s mark throughout the site.  Moreover, Respondent profits from its use of the disputed domain name through the receipt of referral fees.  Based on the evidence in the record, the Panel concludes Respondent intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s VICTORIA’S SECRET mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the gift cards offered on the site.  Consequently, the Panel finds Respondent’s behavior amounts to registration and use in bad faith under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <victoriasecretsgiftcard.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  August 12, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum