Victoria's Secret Stores Brand Management, Inc. v. Private Whois Service
Claim Number: FA1106001395837
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 Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victioriassecret.com> and <victoriascecret.com>, registered with Internet.Bs Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 28, 2011; the National Arbitration Forum received payment June 28, 2011.
On June 30, 2011, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <victioriassecret.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. verified that Respondent is bound by the Internet.Bs Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 1, 2011, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriascecret.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp. verified that Respondent is bound by the Internet.Bs Corp. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@victioriassecret.com and postmaster@victoriascecret.com. Also on July 5, 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 July 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <victioriassecret.com> and <victoriascecret.com>, are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent has no rights to or legitimate interests in the <victioriassecret.com> and <victoriascecret.com> domain names.
3. Respondent registered and used the <victioriassecret.com> and <victoriascecret.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Complainant, Victoria’s Secret Stores Brand Management, Inc., has operated in the women’s lingerie, personal care and beauty products, swim wear and outerwear industries since 1977. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark at issue here (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Private WHOIS Service, registered both the <victioriassecret.com> and the <victoriascecret.com> disputed domain names November 27, 2005. The disputed domain names resolve to identical websites featuring gift card and prize offers in exchange for providing personal information and completing a series of offers from businesses unrelated to Complainant. Additionally, both sites feature Complainant’s mark.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Registration of a mark through the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). In the immediate case, complainant holds many trademark registrations with the USPTO for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). This Panel finds that this registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See 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 [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Further, Complainant does not need to register the mark in Respondent’s country in order to establish rights in the mark under a Policy ¶ 4(a)(i) analysis. See 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 contends that Respondent lacks rights and legitimate interests in the <victioriassecret.com> and <victoriascecret.com> domain names. Initially, Complainant carries the burden of presenting a prima facie case. Once this has been done, the burden shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent’s failure to produce a Response permits a presumption that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See 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.”). For the sake of fairness, however, the Panel still examines the record to determine if such rights or legitimate interests exist for the purposes of Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is not commonly known by the disputed domain names, either as a business, individual, or other organization for the purposes of Policy ¶ 4(c)(ii). The relevant WHOIS information identifies Respondent as “Private Whois Service”, which in not nominally similar to the <victioriassecret.com> and <victoriascecret.com> domain names. In fact, nothing in Respondent’s WHOIS information suggests that Respondent is “commonly known” by the disputed domain names.
Further, Complainant contends that Respondent is not affiliated with Complainant and that Complainant has not authorized Respondent to use the VICTORIA’S SECRET marks in domain names, on any web site, or in any other manner. Absent a Response, no contrary evidence is in the record, leading the Panel to find that Respondent is not commonly known by the <victioriassecret.com> and <victoriascecret.com> domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further alleges that Respondent’s use of the disputed domain names is not 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 disputed domain names resolve to identical websites featuring gift card and prize offers in exchange for providing personal information and completing a series of offers from businesses unrelated to Complainant. The Panel finds that these uses are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and they are not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names that contain Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant also urges that Respondent registered and used the disputed domain names in bad faith. The Panel is permitted to make an inference that Respondent benefits commercially from the operation of websites housed at the disputed domain names. By incorporating Complainant’s logo on its web pages and using confusingly similar domain names, Respondent is attempting to create confusion as to whether its websites are in fact endorsed by Complainant. Respondent uses the domain names sites in this manner to create the likely confusion that Complainant does sponsor the sites. This confusion likely results in a greater volume of Internet traffic to Respondent’s sites and, accordingly, greater commercial gain than Respondent would have under its own name. The Panel finds that attempting to benefit from confusion in order to realize a commercial gain in this way constitutes bad faith as envisioned by Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victioriassecret.com> and <victoriascecret.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 12, 2011
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