Victoria’s Secret Stores Brand Management, Inc. v. Jianxiong Xu
Claim Number: FA1102001371291
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 Jianxiong Xu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriassecret-pink.info> and <vs-pink.info>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2011; the National Arbitration Forum received payment on February 4, 2011.
On February 5, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-pink.info> and <vs-pink.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 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@victoriassecret-pink.info and postmaster@vs-pink.info. Also on February 8, 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 March 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <victoriassecret-pink.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark.
Respondent’s <vs-pink.info> domain name is confusingly similar to Complainant’s VS mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecret-pink.info> and <vs-pink.info> domain names.
3. Respondent registered and used the <victoriassecret-pink.info> and <vs-pink.info> 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 footwear in stores, through its print mail order catalogue and on its retail website. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET PINK mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,820,380 issued March 2, 2004;
Reg. No. 2,992,758 issued September 6, 2005;
Reg. No. 3,226,760 issued April 10, 2007;
Reg. No. 3,502,263 issued September 16, 2008; and
Reg. No. 3,520,974 issued October 21, 2008.
Complainant also owns trademark registrations for the VS mark with the USPTO:
Reg. No. 2,244,265 issued May 11, 1999 and
Reg. No. 3,651,878 issued July 7, 2009.
Respondent, Jianxiong Xu, registered the <victoriassecret-pink.info> and <vs-pink.info> domain names on July 9, 2010. The <victoriassecret-pink.info> domain name currently does not resolve to an active website, instead displaying a message that states, “The server at victoriassecret-pink.info is taking too long to respond.” The <vs-pink.info> domain name currently resolves to a website entitled “Burberry Burberry” that offers for sale what are purported to be Burberry brand scarves. Both disputed domain names previously resolved to identical websites entitled “vibram fivefingers online store” that listed Complainant as a sponsor and displayed images of Complainant’s products but did not offer any for sale. Instead, these resolving websites sold Vibram Five Fingers footwear, in competition with the footwear sold by Complainant.
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 PINK mark with the USPTO:
Reg. No. 2,820,380 issued March 2, 2004;
Reg. No. 2,992,758 issued September 6, 2005;
Reg. No. 3,226,760 issued April 10, 2007;
Reg. No. 3,502,263 issued September 16, 2008; and
Reg. No. 3,520,974 issued October 21, 2008.
The Panel finds that these trademark registrations with the USPTO supply sufficient proof that Complainant has rights in the VICTORIA’S SECRET PINK mark according to Policy ¶ 4(a)(i), even when Respondent’s place of residence or business operations is outside the U.S. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations 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 also owns trademark registrations for the VS mark with the USPTO:
Reg. No. 2,244,265 issued May 11, 1999 and
Reg. No. 3,651,878 issued July 7, 2009.
The Panel again finds that registering the VS mark with the USPTO conclusively establishes Complainant’s rights in the VS mark for the purposes of Policy ¶ 4(a)(i), regardless of the country of Respondent’s residence or business operations. See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant contends that the <victoriassecret-pink.info> domain name is confusingly similar to the VICTORIA’S SECRET PINK mark because the only differences are the following minor changes: the elimination of the space between terms and the apostrophe, and the addition of the hyphen and the generic top-level domain (“gTLD”) “.info.” The Panel finds that eliminating spaces and apostrophes are inconsequential changes that do not negate a finding of confusing similarity. 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 Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“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.”). The Panel also finds that adding a hyphen and a gTLD has no effect on distinguishing a disputed domain name. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel thus holds that Respondent’s <victoriassecret-pink.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark pursuant to Policy ¶ 4(a)(i).
Complainant also alleges that Respondent’s <vs-pink.info> domain name is confusingly similar to Complainant’s VS mark because the disputed domain name begins with the VS mark, adding only a hyphen, the descriptive term “pink” that refers to one of Complainant’s product lines, and the gTLD “.info.” The Panel finds that adding a descriptive term to Complainant’s mark does not alleviate confusing similarity. See 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.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel also finds that an added hyphen and gTLD are completely irrelevant to the Policy ¶ 4(a)(i) analysis as they produce no substantive change. See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel determines that Respondent’s <vs-pink.info> domain name is confusingly similar to Complainant’s VS mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent now has the burden of demonstrating rights and legitimate interests in the disputed domain names. Respondent, however, failed to respond to the Complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel accordingly finds that Complainant’s allegations are true and Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int’l, D2002-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors, however, to determine whether Respondent has any rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not affiliated with Complainant and has not been licensed or permitted to use Complainant’s marks. The WHOIS information for the disputed domain names lists the registrant as “Jianxiong Xu,” a name which has no noticeable connection to the disputed domain names. The Panel therefore finds that Respondent is not commonly known by the <victoriassecret-pink.info> and <vs-pink.info> domain names and does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Saunders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant argues that Respondent’s <victoriassecret-pink.info> domain name currently does not resolve to an active website. The Panel concludes that Respondent’s failure to actively use the disputed domain name indicates a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent’s <vs-pink.info> domain name currently resolves to a website purporting to sell Burberry scarves. The Panel finds that this commercial website selling apparel in competition with Complainant is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant also asserts that both the <victoriassecret-pink.info> and <vs-pink.info> domain names previously resolved to websites featuring and selling Vibram Five Fingers footwear that competed with Complainant’s offered footwear. Complainant contends that these resolving websites also displayed Complainant’s product images and referred to Complainant as a sponsor of the website, despite offering none of Complainant’s products for sale at the disputed domain names. The Panel again finds that using Complainant’s mark in the disputed domain name to divert consumers to commercial websites competing with Complainant is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also 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.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent currently uses the <vs-pink.info> domain name to drive Internet traffic to commercial websites of Respondent’s choosing that sell clothing that competes with Complainant. The Panel finds that this use of the disputed domain name constitutes a disruption of Complainant’s business and reveals bad faith registration and use according to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent has previously used the <victoriassecret-pink.info> and <vs-pink.info> domain names to divert Internet users to a commercial website selling Vibram Five Finger footwear, despite using Complainant’s mark in the disputed domain name and displaying Complainant’s product images on the resolving website. The Panel finds that this commercial activity relating to a competing product advertised under Complainant’s mark disrupts Complainant’s business as it promotes competition with Complainant. The Panel finds this activity is an example of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent appropriated Complainant’s marks in the registration of the <victoriassecret-pink.info> and <vs-pink.info> domain names with the intention of attracting Internet users seeking Complainant’s products to websites offering similar products for commercial gain. Complainant alleges that Respondent aimed to use Complainant’s mark to create a likelihood of confusion as to the source, sponsorship or affiliation of the disputed domain names so that Respondent could thereby profit from the diversion. The Panel finds that these activities show Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Complainant contends that the <victoriassecret-pink.info> domain name does not currently resolve to an active website. The Panel holds that Respondent’s failure to associate the disputed domain name with a functioning, content-filled website is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <victoriassecret-pink.info> and <vs-pink.info> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 22, 2011
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