Claim Number: FA1007001337417
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 <victoriasothersecrets.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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 July 23, 2010.
On July 27, 2010, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <victoriasothersecrets.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide 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 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2010 by which Respondent could file a response to the Complaint, via e-mail to all persons and entities listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@victoriasothersecrets.com. Also on July 28, 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 24, 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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant sells women’s lingerie, clothing, swimwear, and outwear, along with other products and accessories.
Complainant sells its products through its retail stores and online at the domain name <victoriassecret.com>.
Complainant owns United States Patent and Trademark Office
(“USPTO”) trademark registrations for the
Respondent is not affiliated with Complainant and is not licensed or permitted by Complainant to use Complainant’s mark in a domain name.
Respondent registered the <victoriasothersecrets.com> domain name on June 26, 2009.
The disputed domain name resolves to a website promoting Respondent’s business, which sells women’s clothing and accessories, products that are not Complainant’s but which compete with the business of Complainant.
Respondent’s <victoriasothersecrets.com> domain
name is confusingly similar to Complainant’s
Respondent is not commonly known by disputed the <victoriasothersecret.com> domain name.
Respondent does not have any rights to or legitimate interests in the domain name <victoriasothersecrets.com>.
Respondent registered and uses the disputed <victoriasothersecrets.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 owns USPTO trademark registrations for the
This establishes Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, a panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <victoriasothersecrets.com>
domain name is confusingly similar to Complainant’s
Similarly, adding generic terms or an extra letter to Complainant’s mark is an insufficient modification to prevent a finding of confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the
complainant’s mark does not remove the respondent’s domain names from the realm
of confusing similarity in relation to the complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3,
2006) (finding that the additions of the letter “s” and generic top-level
domains to the <barnesandnobles.info> and <barnesandnobles.biz>
domain names failed to avoid confusing similarity between the domain names and a
complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); further see
Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004)
(finding a respondent’s <amextravel.com> domain name confusingly similar
to a complainant’s AMEX mark because the “mere addition of a generic or
descriptive word to a registered mark does not negate” a finding of confusing
similarity under Policy ¶ 4(a)(i)).
Finally, the elimination of a space between the words of the
mark and the addition of a gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v.
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).
Therefore, the Panel finds that Respondent’s <victoriasothersecrets.com> domain
name is confusingly similar to Complainant’s
Under Policy ¶ 4(a)(ii), Complainant must first present a prima facie case demonstrating that Respondent lacks rights to and legitimate interests in the challenged domain name. The burden then shifts to Respondent to demonstrate its rights and interests in the disputed domain. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the common approach is for
respondents to seek to bring themselves within one of the examples of paragraph
4(c) or put forward some other reason why they can fairly be said to have a
relevant right or legitimate interests in respect of the domain name in
question.
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant has satisfied its burden under this head of the Policy, but Respondent has failed to respond to the allegations of the Complaint filed against it. As a result of Respondent’s default, we have no evidence before us suggesting the existence of rights or legitimate interests in the contested domain name on the part of Respondent. We are therefore free to conclude that Respondent has no such rights or interests. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003):
It
can be inferred that by defaulting Respondent showed nothing else but an
absolute lack of interest on the domain name.
See also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests in a disputed domain name where no such right or interest was immediately apparent to a panel, and where a respondent did not come forward to suggest any right or interest it may have possessed).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with Complainant and is not licensed or permitted by Complainant to use Complainant’s mark in a domain name. Complainant also alleges, without objection from Respondent, that Respondent is not commonly known by the <victoriasothersecret.com> domain name. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Victoria Lewis,” which does not coincide with the subject domain name. On this record, 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 pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
We also note that Complainant contends, and Respondent does
not deny, that the <victoriasothersecret.com>
domain name resolves to the website of Complainant’s business, which sells
women’s clothing and accessories, and that the products offered by Respondent at
that website are similar to and in competition with those offered by
Complainant. It is safe to presume from
the circumstances presented that Respondent profits from this behavior. We conclude that Respondent is using
Complainant’s mark in the disputed domain name to divert Internet users seeking
information about Complainant to Respondent’s own commercial website for
commercial gain. Thus appropriating
Complainant’s mark and using it to divert Internet users to Respondent’s own
site does not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA
758981 (Nat. Arb. Forum Sept.
14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE
mark to redirect Internet users to that respondent’s 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)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).
The Panel therefore finds that Policy
¶ 4(a)(ii) has been satisfied.
The website resolving from the <victoriasothersecrets.com> domain name promotes Respondent’s business, which is a competitor of Complainant in the business of marketing women’s clothing and accessories. Respondent’s use of Complainant’s mark, in this manner disrupts Complainant’s business and thus indicates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See, for example, EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that a respondent, a complainant’s commercial competitor, registered domain names for the purpose of disrupting that complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).
The similarity between Respondent’s <victoriasothersecrets.com> domain name and Complainant’s
VICTORIA’S SECRET mark is evidently intended to capitalize on Complainant’s
fame by attracting Internet users to Respondent’s resolving website, which
markets products likely to be of interest
to Complainant’s customers. Respondent
thus aims to profit by misleading and diverting unknowing Internet users to its
website. This use of Complainant’s mark reveals
bad faith registration and use of the disputed 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 business illustrated that respondent’s bad faith
registration and use of the domain name 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 contested
domain name, for commercial gain, where a respondent used it to attract
Internet users to the website of a commercial 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 <victoriasothersecrets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 2, 2010
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