Victoria's Secret Stores Brand Management, Inc. v. Ivica Maloca
Claim Number: FA1107001398770
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 Ivica Maloca (“Respondent”), Croatia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecret-gift.info>, registered with 1&1 Internet AG.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 19, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-gift.info> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 July 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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-gift.info. Also on July 22, 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 August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecret-gift.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecret-gift.info> domain name.
3. Respondent registered and used the <victoriassecret-gift.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., is the owner of the VICTORIA’S SECRET mark. Complainant’s mark has multiple registrations through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981). The VICTORIA’S SECRET mark is used in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards in stores, through catalogues, and online.
Respondent, Ivica Maloca, registered the <victoriassecret-gift.info> domain name on February 19, 2011. The disputed domain name resolves to a website which provides a link which purports to redirect Internet users to an entry site for a VICTORIA’S SECRET gift-card giveaway, but actually redirects users to an unrelated website soliciting subscription-based offers for things like mobile phone quizzes, though this page does not always load.
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 contends that it has rights in the VICTORIA’S SECRET mark. The mark has been registered by Complainant multiple times with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). Registration of a mark with a federal trademark authority is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i), even if the mark is not registered within the country in which a respondent resides or operates. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant also contends that the <victoriassecret-gift.info> domain name is confusingly similar to its mark. The elimination of the space between the words in Complainant’s mark, removal of the apostrophe, addition of the hyphen, and addition of the generic top-level domain (“gTLD”) “.info” all together fail to distinguish the disputed domain name and Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Marek Sanders, FA 1288579 (Nat. Arb. Forum Nov. 19, 2009) (finding that changes in punctuation, the deletion of spaces, and the addition of a gTLD fails to bar a finding of confusing similarity pursuant to Policy ¶ 4(a)(i)). The Panel holds that the addition of the descriptive term “gift” is similarly insubstantial. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a term that has an obvious relationship to the complainant’s business). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is met.
A complainant which successfully makes a prima facie case, shifts the burden to the respondent to disprove the claims. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.”). Once the burden has shifted, if the respondent has not submitted a response to the complaint, the panel may infer that the respondent does not dispute the allegations. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). Complainant contends that Respondent has neither rights nor legitimate interests in the <victoriassecret-gift.info> domain name. The Panel finds that Complainant has made a prima facie case in support of this claim. Respondent has failed to submit a Response. The Panel, although able to conclude that Respondent does not have rights and legitimate interests in the disputed domain name, will still review the record in accordance with Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <victoriassecret-gift.info> domain name. The WHOIS record for the disputed domain name lists “Ivica Maloca” as the domain name registrant. Given that the WHOIS information does not incorporate any part of the VICTORIA’S SECRET mark, the Panel finds that it does not indicate that Respondent is commonly known by the disputed domain name. Additionally, there is no evidence that Respondent has been licensed or permitted to use the VICTORIA’S SECRET mark. Therefore, the Panel finds that Respondent is not commonly known by the <victoriassecret-gift.info> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant next contends that Respondent has neither made a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. The <victoriassecret-gift.info> domain name resolves to a website which ultimately redirects Internet users to an unrelated, commercial website for which, the Panel infers, Respondent receives referral fees. This type of use has consistently been found to neither be a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006); The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007), Therefore, the Panel finds that Respondent has not used the <victoriassecret-gift.info> domain name for a use which is protected under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) is met.
Complainant contends that Respondent registered and used the disputed domain name with the intent to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the sponsorship or endorsement of Respondent’s <victoriassecret-gift.info> domain name. Such use has been held to constitute bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel finds that Respondent has registered and used the disputed domain name for commercial gain with the intent to create confusion among Internet users pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) is met.
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-gift.info> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 24, 2011
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