Victoria's Secret Stores Brand Management, Inc. v. Tomas Sadauskas / home
Claim Number: FA1108001405131
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 Tomas Sadauskas / home (“Respondent”), Lithuania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getvictoriassecretcouponcodes.com>, registered with eNom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 29, 2011; the National Arbitration Forum received payment on August 29, 2011.
On August 30, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <getvictoriassecretcouponcodes.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@getvictoriassecretcouponcodes.com. Also on September 1, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <getvictoriassecretcouponcodes.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <getvictoriassecretcouponcodes.com> domain name.
3. Respondent registered and used the <getvictoriassecretcouponcodes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Victoria's Secret Stores Brand Management, Inc., sells women’s lingerie and
other apparel, personal care and beauty products, and gift cards. Complainant
owns multiple trademark registrations for the VICTORIA’S SECRET mark with the
United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995;
Reg. No. 2,455,260 registered May 29, 2001; &
Reg. No. 3,480,533 registered August 5, 2008.
Respondent, Tomas Sadauskas / home, registered the <getvictoriassecretcouponcodes.com> domain name on April 11, 2011. The disputed domain name resolves to a web page that features a “token blog post” about VICTORIA’S SECRET coupon codes, other images, and a link advertising a free VICTORIA’S SECRET coupon in exchange for providing personal information and completing sponsor offers from unrelated businesses.
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.
The Panel finds that Complainant has established rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) by registering it with the USPTO. In similar cases where a complainant had numerous USPTO trademark registration, such as Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007), and UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), the panel also found that the complainant had established rights in the mark.
Respondent’s <getvictoriassecretcouponcodes.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain name only makes the following minor changes to Complainant’s mark: it adds the generic terms “get,” “coupon,” and “codes”; removes the space between the terms; deletes the apostrophe; and adds the generic top-level domain (“gTLD”) “.com.” In Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), and LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003), past panels found that neither punctuation nor spaces were relevant to a Policy ¶ 4(a)(i) analysis as they were not reproducible in domain names. The addition of the generic terms and the gTLD also fail to distinguish the disputed domain name. 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 Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel concludes that Respondent’s <getvictoriassecretcouponcodes.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of establishing a prima facie case and then the burden shifts to Respondent to show that it has rights and legitimate interests in the disputed domain name. 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)). The Panel finds that Complainant has sufficiently established a prima facie case in these proceedings. Since Respondent has failed to respond to Complainant’s allegations, the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); see also Banco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL.”). The Panel elects, however, to consider the submitted evidence to determine if Respondent has any rights or legitimate interests in the disputed domain name according to the factors of Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <getvictoriassecretcouponcodes.com> domain name. Complainant asserts that nothing in the WHOIS information, which identifies the registrant as “Tomas Sadauskas / home,” implies any connection between Respondent and the disputed domain name. Furthermore, Complainant contends that Respondent is not affiliated with Complainant, nor is it licensed to use the VICTORIA’S SECRET mark in any way. The resolving website and gift card offers are not endorsed by Complainant. Based on these allegations and evidence, the Panel finds that Respondent has no rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) as it is not commonly known by the disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant alleges that Respondent’s resolving website displays a “token blog post” about VICTORIA’S SECRET and then features a link advertising a free VICTORIA’S SECRET coupon in exchange for consumers’ personal information. Complainant contends that Respondent profits from diverting Internet users to the website featuring this advertised link in the form of referral fees. The Panel finds that this activity is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent uses the VICTORIA’S SECRET mark and the related content on the resolving website in order to drive traffic to the website and the pay-per-click links. The use of Complainant’s mark, and offers purportedly pertaining to Complainant, create a likelihood of confusion among consumers as to the source, sponsorship, or affiliation of the resolving website. Respondent no doubt receives commercial gain from the diverted Internet users when they click on advertised links and are referred to other third-party websites. Accordingly, the Panel finds bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
Complainant asserts that it is clear from the content of the resolving website that Respondent was aware of Complainant’s VICTORIA’S SECRET mark when it registered the <getvictoriassecretcouponcodes.com> domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark when it registered the disputed domain name, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getvictoriassecretcouponcodes.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 30, 2011
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