Victoria's Secret Stores Brand Management, Inc. v. Siarhei Leonau
Claim Number: FA1106001393866
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 Siarhei Leonau (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecret-rus.com>, registered with FastDomain.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2011; the National Arbitration Forum received payment on June 16, 2011.
On June 16, 2011, FastDomain confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-rus.com> domain name is registered with FastDomain and that Respondent is the current registrant of the name. FastDomain has verified that Respondent is bound by the FastDomain 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 June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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-rus.com. Also on June 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.
A timely Response was received and determined to be complete on June 20, 2011.
On June 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Victoria's Secret Stores Brand Management, Inc. contends that:
1. The domain name <victoriassecret-rus.com> which is registered in the name of Respondent is confusingly similar to Complainant’s registered trademark and service mark VICTORIA’S SECRET and variations thereof (collectively, the “VICTORIA’S SECRET Marks”) in which Complainant has rights.
2. Respondent does not have any rights or legitimate interests in the <victoriassecret-rus.com> domain name.
3. Respondent registered and is using the domain name <victoriassecret-rus.com> in bad faith.
4. The domain name <victoriassecret-rus.com> should be transferred from Respondent to Complainant.
B. Respondent
Respondent has recited his or her version of events leading to the registration and use of the domain name <victoriassecret-rus.com>, concluding with the following statement:
“Having studied the complaint, the Respondent has come to a conclusion that there was an error at a stage of registration of a domain name www.victoriassecret-rus.com, as has caused occurrence of the given dispute. As a result, of June, 16th 2011, the site breadboard model www.victoriassecret-rus.com has been closed.
To figure out this problem, the Respondent is ready to transfer a domain name www.victoriassecret-rus.com to the Applicant.”
Complainant is a prominent company engaged in the sale inter alia
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."
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.
However, it is clear from the Complaint and the above extract from the Response that this matter is now a request for a consent order that the disputed domain name be transferred from Respondent to Complainant. That is so because, first, Complainant asks for an order that the domain name be transferred to it for the reasons summarized above. Respondent says that an error occurred at the time of registration and that this has given rise to the dispute. Accordingly, Respondent concludes that “To figure out this problem, the Respondent is ready to transfer a domain name www.victoriassecret-rus.com to the Applicant.” The panel takes this as a clear statement by Respondent consenting to the transfer and consequently both parties have consented to that course being taken. Both parties are therefore asking for the same order and the question arises how the Panel should deal with that situation.
The same issue came before the panel as presently constituted in Digg Inc. v. Damien Overeem FA 836770 (Nat. Arb. Forum Dec. 20, 2006) and on that occasion the following opinion was expressed, which is adopted here:
“It is open to the Panel when faced with such a situation to forgo the usual UDRP analysis of the three issues set out above and simply make an order for the transfer of the domain name to Complainant. That course was followed in Boehringer Ingelheim Int’l GmbH v. modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Management Limited Partnership v. PSC Management Limited Partnership (Nat. Arb. Forum June 6, 2005) and in Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant…Since the requests of the parties in this case are identical, the panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”). The same course was followed recently by the panel as presently constituted in Norgren, Inc. v. Norgren, Inc. c/o Domain Administrator, FA 670051 (Nat. Arb. Forum May 23, 2006) and Diners Club International Ltd. v. Nokta Internet Technologies FA 720824 (Nat. Arb. Forum July 24, 2006) and also by the panel in The Body Shop International plc v. Agri, Lacus, and Caelum LLC, FA 679564 (Nat. Arb. Forum May 25, 2006). The Panel respectfully adopts the position as expressed in The Body Shop International plc v. Agri, Lacus, and Caelum LLC, supra:
Consistent with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot issue a decision that would be either less than requested, or more than requested by the parties. Because both Complainant and Respondent request the transfer of the disputed domain name to Complainant, the Panel must recognize the common request of the two parties.
Indeed, as has often been said, it would be unwise to make any other findings in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any findings of fact or compliance or otherwise with respect to the detailed provisions of the Policy, but will make the only order that is appropriate in the circumstances, which is an order for the transfer of the domain name to Complainant.”
For the foregoing reasons the Panel will not make any findings, but will make the only order that is appropriate in this case, which is an order transferring the disputed domain name to Complainant.
The Panel concludes that for the above reasons relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecret-rus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: June 28, 2011
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