Victoria’s Secret Stores Brand Management, Inc. v. Industria UK Ltd
Claim Number: FA1006001331867
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 Industria UK Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriashardcoresecrets.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2010.
On June 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriashardcoresecrets.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 July 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 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@victoriashardcoresecrets.com. Also on July 1, 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 July 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 "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:
1. Respondent’s <victoriashardcoresecrets.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 <victoriashardcoresecrets.com> domain name.
3. Respondent registered and used the <victoriashardcoresecrets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981). Complainant uses its mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant operates more than 1,000 retail stores under its VICTORIA’S SECRET mark along with mail order catalogues and its e-commerce site resolving from the <victoriassecret.com> domain name.
Respondent, Industria UK Ltd, registered the <victoriashardcoresecrets.com> domain name on February 16, 2007. The disputed domain name resolves to a website that displays adult-oriented photographs. When an Internet user clicks anywhere on the website they are redirected to an adult-oriented website known as “Killergram” which displays additional adult-oriented photographs and an offer to join the “Killergram” site for a fee.
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.
The Panel finds that the registration of its VICTORIA’S SECRET mark with the USPTO is sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <victoriashardcoresecrets.com> domain name is confusingly similar to
Complainant’s VICTORIA’S SECRET mark.
Respondent’s disputed domain name removes the apostrophe and space
between the terms in Complainant’s mark.
Additionally, Respondent’s disputed domain name adds the generic term
“hardcore,” the letter “s,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the
removal of the apostrophe and the spaces do not sufficiently distinguish
between the disputed domain name and Complainant’s mark. See
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 U.S. News & World Report,
Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of
punctuation and the space between the words of Complainant’s mark, as well as
the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the addition of a
generic term, a single letter, and a gTLD create a confusing similarity between
the disputed domain name and Complainant’s mark. See
Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb.
Forum May 22, 2007) (finding that the addition of the letter “s” to a
registered trademark in a contested domain name is not enough to avoid a finding
of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v.
Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the
affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that
Respondent’s <victoriashardcoresecrets.com> domain name is confusingly similar to
Complainant’s VICTORIA’S SECRET mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights and
legitimate interests in the disputed domain name. Pursuant to the requirements of Policy ¶
4(a)(ii), Complainant must first establish a prima facie case in support of its allegations before the burden
shifts to Respondent to provide evidence that it does in fact have rights or
legitimate interests in the disputed domain name. The Panel finds that Complainant has
established a prima facie case based
on the arguments contained in the Complaint.
Additionally, Respondent has failed to submit a Response to these
proceedings, allowing the Panel to infer that Respondent does in fact lack
rights and legitimate interests in the <victoriashardcoresecrets.com> domain name.
See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant
must first make a prima facie case that [the] respondent lacks rights
and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii),
and then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also 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.”). Nevertheless, the
Panel will examine the record to determine whether or not Respondent owns
rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent is not affiliated with Complainant and that Respondent has not been licensed or permitted to use Complainant’s mark in a domain name. The WHOIS information lists the registrant of the disputed domain name as “Industria UK Ltd,” which the Panel finds is not nominally related to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <victoriashardcoresecrets.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant contends that Respondent’s disputed domain name resolves to a website that displays adult-oriented material. Additionally, Complainant contends that when Internet users click on the resolving website they are redirected to Respondent’s “Killergram” adult-oriented website. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the confusingly similar <victoriashardcoresecrets.com> domain name in an attempt to intentionally attract Internet users to Respondent’s own website for Respondent’s commercial gain. The Panel infers that Respondent profits from Internet users who click on the resolving website and are then redirected to Respondent’s “Killergram” site. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Respondent’s <victoriashardcoresecrets.com> domain name resolves to a website that
contains adult-oriented pictures and content.
If an Internet user clicks on any part of the resolving website, the
Internet user is redirected to Respondent’s “Killergram” website that features
further adult-oriented content. The
Panel finds Respondent’s use of the confusingly similar disputed domain name to
host an adult-oriented website constitutes bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v.
Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that
the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Six
Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (
“[W]hatever the motivation of Respondent, the diversion of the domain name to a
[adult oriented] site is itself certainly consistent with the finding that the
Domain Name was registered and is being used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriashardcoresecrets.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 2, 2010
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