Victoria's Secret Stores Brand Management v. caliberadvisorygroup
Claim Number: FA1103001375454
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 caliberadvisorygroup (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretbra.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 1, 2011.
On March 3, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretbra.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 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@victoriasecretbra.com. Also on March 7, 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 29, 2011, 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the owner of the VICTORIA’S SECRET trademark, which it employs as the name of more than 1,000 retail stores located throughout the United States, and in its print catalogs and online in connection with the sale of women’s lingerie and other apparel, as well as personal care and beauty products, swimwear, and outerwear.
Complainant owns registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the disputed domain name on April 23, 2010.
The disputed domain name resolves to a website entitled “Victoria Secret Bra,” which contains a single blog post consisting of an image of a bra and what appear to be strung-together keywords and product advertisements.
The resolving website also offers for sale Complainant’s VICTORIA’S SECRET merchandise from third-party online marketer Amazon.com, along with the products of Complainant’s business competitors.
Respondent’s <victoriasecretbra.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not affiliated with Complainant, nor has Respondent been licensed or permitted by Complainant to use the VICTORIA’S SECRET mark in a domain name, on any website, or in any other manner.
Respondent is not commonly known by the <victoriasecretbra.com> domain name, either as a business, individual or other organization.
Respondent does not have any rights to or legitimate interests in the domain name <victoriasecretbra.com>.
Respondent registered and uses the <victoriasecretbra.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 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 a 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.
Under Policy ¶ 4(a)(i), Complainant has rights in its VICTORIA’S SECRET trademark by virtue of its registration of the mark with a national trademark authority, the USPTO. See 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); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <victoriasecretbra.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark. The disputed domain name eliminates the apostrophe and letter “s” from the VICTORIA’S portion of the mark, as well as the space between the terms of the mark, includes the descriptive term “bra” (which describes one of Complainant’s product offerings), and adds the generic top-level domain (“gTLD”) “.com.” These alterations are not sufficient to create a meaningful distinction between the domain name and the 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 a domain name from a competing mark); see also Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to a complainant’s VICTORIA’S SECRET trademark); further see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), finding that:
[S]paces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
Finally see Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where the disputed domain name <kohlerbaths.com> contained a complainant’s mark in its entirety, while adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Therefore, the Panel finds that Respondent’s <victoriasecretbra.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case in support of its allegations that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden of proof shifts to Respondent to prove that it possesses such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests).
Complainant has satisfied its burden to establish a prima facie case under this head of the Policy, while Respondent has failed to provide a response to the Complaint filed in this proceeding. Therefore, we are permitted to infer that Respondent lacks rights to or legitimate interests in the <victoriasecretbra.com> domain name. See 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.
We will nonetheless examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested <victoriasecretbra.com> domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not affiliated with Complainant, nor has Respondent been licensed or permitted by Complainant to use the VICTORIA’S SECRET mark in a domain name, on any website or in any other manner, and that Respondent is not commonly known by the <victoriasecretbra.com> domain name, either as a business, individual or other organization. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “caliberadvisorygroup,” which does not resemble the instant domain name. On this record, we are constrained to 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 this domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so failed to show that it had rights to legitimate interests in a contested domain where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We next note that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website entitled “Victoria Secret Bra,” which contains a single blog post consisting of an image of a bra along with what appears to be a string of keywords and product advertisements, and that the resolving website offers links to Complainant’s VICTORIA’S SECRET merchandise, as well as the products of Complainant’s commercial competitors, as offered for sale by a third-party, online merchandiser Amazon.com. In the circumstances here presented, we may comfortably presume that Respondent profits from this scheme, whether by the receipt of click-through fees associated with the visits of Internet users to the sponsored links or otherwise. Respondent’s use of the disputed domain name in this manner is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with links to the websites of a complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using a contested domain name to receive click-through fees via sponsored links to the websites of a complainant’s competitors 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)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the disputed domain name to redirect to Respondent’s website Internet users seeking Complainant’s products, thus to offer what are purported to be Complainant’s goods, as well as competing goods, constitutes a disruption of Complainant’s business and stands as evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring from a respondent, a watch dealer not authorized to sell a complainant’s goods, to a complainant the <fossilwatch.com> domain name); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002):
Unauthorized use of Complainant’s … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
Finally, Respondent is using Complainant’s VICTORIA’S SECRET mark in the disputed domain name to drive traffic to Respondent’s resolving website, which is neither sponsored nor authorized by Complainant and which offers for sale goods in competition with the business of Complainant. Respondent presumably benefits commercially from this use of the disputed domain name by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain name and resolving website. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where a respondent used a disputed domain name to sell a complainant’s products without permission and to mislead Internet users by implying that that respondent was affiliated with that complainant); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002):
[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.
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, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <victoriasecretbra.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 5, 2011
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