Victoria's Secret Stores Brand Management, Inc. v. Domain Tech Enterprises c/o Domain Administrator
Claim Number: FA1105001388153
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 NAME
The domain name at issue is <victoriasecretcard.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 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 May 11, 2011; the National Arbitration Forum received payment on May 11, 2011.
On May 12, 2011, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretcard.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. 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 May 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@victoriasecretcard.com. Also on May 17, 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 June 8, 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 sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards through its retail stores, catalogues and website.
Complainant owns trademark 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 <victoriasecretcard.com> domain name on October 2, 2005.
The disputed domain name redirects to the <my-lingerie-store-online.com> domain name, which offers a $500 VICTORIA’S SECRET gift card in exchange for providing personal information, including a mobile phone number that adds $9.99 to the participant’s cell phone bill.
Respondent’s <victoriasecretcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET trademark in domain names or in any other manner.
Respondent is not commonly known by the contested domain name, either as a business, individual, or other organization.
Respondent does not have any rights to or legitimate interests in the domain name <victoriasecretcard.com>.
Respondent registered and uses the <victoriasecretcard.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 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.
Complainant has rights in the trademark VICTORIA’S SECRET for purposes of Policy ¶ 4(a)(i) by reason of its registrations of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
This is true without regard to the fact that Respondent lives or operates in Chile instead of the United States. See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent lives or operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction).
Respondent’s <victoriasecretcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark because the disputed domain name only deletes the final letter “s” and apostrophe in “victoria’s,” adds the generic term “card,” and attaches the generic top-level domain (“gTLD”) “.com.” Deleting a single letter from the mark of another does not change the character of the resulting domain name so as to prevent a finding of confusing similarity. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> was confusingly similar to a complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> was confusingly similar to a complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Similarly, adding a generic term to Complainant’s mark in forming the contested domain name does not prevent a finding of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to a complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> was confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a mark to form a domain name is immaterial to the analysis required under Policy ¶ 4(a)(i)).
Likewise, omitting an apostrophe and attaching a gTLD do not remove the disputed domain name from the realm of confusing similarity. See 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.
Finally, see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
The Panel thus determines that Respondent’s <victoriasecretcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), once Complainant has made out a prima facie case on this point, the burden shifts to Respondent to demonstrate its rights to or legitimate interests in the domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has adequately established a prima facie case under this head of the Policy. Because Respondent has failed to respond to the allegations of the Complaint, we may presume that Respondent lacks rights to and legitimate interests in the disputed 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.
Nonetheless, we elect to examine the evidence of record, 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 disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET marks in domain names or in any other manner, and that Respondent is not commonly known by the domain name, either as a business, individual, or other organization. Moreover, the WHOIS information for the <victoriasecretcard.com> domain name identifies the registrant only as “Domain Tech Enterprises c/o Domain Administrator,” which does not resemble the disputed domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Tercent Inc. v . Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that ‘nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com> where there was no evidence in the record, including the pertinent WHOIS information, suggesting that respondent was commonly known by the disputed domain name).
We also observe that Complainant argues, without objection from Respondent, that Respondent’s <victoriasecretcard.com> domain name diverts Internet users to the <my-lingerie-store-online.com> domain name, and that the resolving website offers a $500 Victoria’s Secret gift in exchange for the provision of Internet users’ personal information, so that when Internet users enter their mobile telephone numbers, a $9.99/month charge is added to their cell phone bills. The described system is a phishing scheme that does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and other personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the disputed <allianzcorp.biz> domain name fraudulently to acquire the personal and financial information of Internet users seeking a complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <victoriasecretcard.com> domain name to redirect Internet users seeking Complainant’s website to a website purportedly offering a Victoria’s Secret gift card in exchange for personal information. The resolving website purports to enroll Internet users in a service that adds $9.99/month to their cell phone bills when they reveal their cell phone numbers. In the circumstances here presented, we are comfortable in presuming that Respondent receives referral fees for sending consumers to this resolving website. Respondent is thus using a domain name that contains Complainant’s mark in order to attract, mislead and confuse consumers seeking Complainant’s website for Respondent’s own illicit commercial gain. This is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See, for example, 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).
See also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding on similar facts that a respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and a complainant’s AOL mark, which evidenced bad faith registration and use of the domains pursuant to Policy ¶ 4(b)(iv)).
Moreover, the behavior of Respondent as described in the Complaint constitutes, as we have already concluded, a phishing scheme, the operation of which is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use of a domain name where a respondent used the <wellsbankupdate.com> domain name fraudulently to acquire the personal financial information of a complainant’s customers); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004): “The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have 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 <victoriasecretcard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 22, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page