Victoria’s Secret Stores Brand Management, Inc. v. Domain Tech Enterprises c/o Domain Administrator
Claim Number: FA1101001369407
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 Domain Tech Enterprises c/o Domain Administrator (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com>, registered with Power Brand Center Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 25, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names are registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2011 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@victoriasecretsangelcard.com and postmaster@victoriasecretscreditcard.com. Also on January 28, 2011, 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 February 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names.
3. Respondent registered and used the <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant also promotes a credit card in connection with its VICTORIA’S SECRET marks, called the Angel Card. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995;
Reg. No. 2,455,260 issued May 29, 2001; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, Domain Tech Enterprises c/o Domain Administrator, registered the <victoriasecretsangelcard.com> domain name on January 16, 2006 and the <victoriasecretscreditcard.com> domain name on June 1, 2006. The disputed domain names redirect to the <lingerie-for-you.com> domain name, which invites Internet users to complete a short survey in exchange for the opportunity to participate in an incentive gift program.
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.
Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the USPTO:
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995;
Reg. No. 2,455,260 issued May 29, 2001; and
Reg. No. 3,480,533 issued August 5, 2008.
The Panel finds that Complainant’s registration of its mark with the USPTO provides sufficient evidence to show that Complainant has rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operates in a country outside the United States. 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 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).
Complainant alleges that Respondent’s <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark. Each disputed domain name makes one or more of the following changes to Complainant’s mark: deletion of the space between terms, deletion of the apostrophe, deletion of the letter “s” from “victoria’s,” addition of the letter “s” to “secret,” addition of the generic top-level domain (“gTLD”) “.com,” and the addition of one or more of the following descriptive terms: “angel,” “card,” and “credit.” The Panel finds that deleting spaces and apostrophes does not distinguish the disputed domain names from Complainant’s mark. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); 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). The Panel concludes that adding and deleting single letters also does not affect the essential character of the disputed domain name. 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 Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel also holds that adding descriptive words to Complainant’s mark does not dispel confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The Panel concludes that the addition of the gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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). The Panel accordingly finds that Respondent’s <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), before Complainant can shift the burden to show rights and legitimate interests in the disputed domain names to Respondent, Complainant must present a prima facie case. The Panel deems the evidence Complainant has presented to be sufficient in this regard, and thus Respondent now bears the burden of demonstrating its rights and legitimate interests. By defaulting and failing to respond, however, Respondent has not answered any of Complainant’s allegations and has failed to present any evidence of rights and legitimate interests. The Panel concludes that Respondent does not have rights and legitimate interests and Complainant’s allegations may be taken as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel elects to consider the evidence in the record, however, in light of the Policy ¶ 4(c) to make a complete determination on the issue of Respondent’s rights and legitimate interests.
Complainant argues that Respondent is not affiliated with Complainant and has not been licensed or permitted by Complainant to use Complainant’s VICTORIA’S SECRET mark in the <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names. The WHOIS information for the disputed domain name lists the registrant as “Domain Tech Enterprises c/o Domain Administrator,” which does not reflect any association with the disputed domain names. The Panel thus holds that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant asserts that Respondent’s <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names both redirect to the <lingerie-for-you.com> domain name, offering Internet users the chance to participate in an incentive gift program after completing a short survey. Complainant argues that both disputed domain names previously redirected to the <giftcardrewardzone.com> domain name which purportedly offered visitors a $500 Victoria’s Secret gift card in exchange for providing personal contact information and completing a series of sponsor offers. Complainant contends that both the prior and current uses benefit Respondent because it receives referral fees for redirecting Internet users to these advertising-related websites. The Panel finds that using the disputed domain names to redirect Internet users to unrelated websites for referral fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that both Respondent’s former and current uses of the <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names redirect traffic to websites of Respondent’s choosing that are not sponsored or authorized by Complainant. Complainant argues that Respondent incorporates Complainant’s mark in these disputed domain names to attract Internet users seeking Complainant, drive higher traffic to the redirected websites, and thereby profit from referral fees. The Panel finds that this use of the disputed domain names demonstrates bad faith registration and use according to 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds 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 <victoriasecretsangelcard.com> and <victoriasecretscreditcard.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 25, 2011
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