Victoria's Secret Stores Brand Management, Inc. v. Meyriana Dwi Damayanti
Claim Number: FA1111001417833
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 Meyriana Dwi Damayanti (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretfashion.net>, registered with Name.com.
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 November 30, 2011; the National Arbitration Forum received payment on November 30, 2011.
On November 30, 2011, Name.com confirmed by e-mail to the National Arbitration Forum that the <victoriasecretfashion.net> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.com 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 December 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@victoriasecretfashion.net. Also on December 1, 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 December 30, 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 <victoriasecretfashion.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretfashion.net> domain name.
3. Respondent registered and used the <victoriasecretfashion.net> 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 numerous registrations for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981) with the United States Patent and Trademark Office (“USPTO”). The mark is used in connection with women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.
Respondent, Meyriana Dwi Damayanti, registered the <victoriasecretfashion.net> domain name on July 29, 2011. The disputed domain name previously resolved to a website which displayed adult-oriented content with advertisements that link Internet users to adult-oriented websites, and included copies of Complainant’s promotional photographs. The <victoriasecretfashion.net> domain name currently resolves to an inactive website.
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 provides the Panel with evidence of its extensive list of registrations through the USPTO for the VICTORIA’S SECRET mark. The Panel therefore finds that Complainant has rights in its VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i), even though Respondent may not live or operate in the U.S. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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).
Respondent’s <victoriasecretfashion.net> domain name is confusingly similar to Complainant’s mark. The Panel finds that Respondent’s deletion of the space between the words of Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.net” are necessary changes in domain names and thus make no difference for a Policy ¶ 4(a)(i) determination. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that the deletion of the apostrophe in Complainant’s mark fails to distinguish the domain name from Complainant’s mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The Panel finds that Respondent’s deletion of the letter “s” in Complainant’s mark fails to shield Respondent from a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark). Furthermore, the Panel finds that Respondent’s addition of the generic term “fashion” to Complainant’s mark in the <victoriasecretfashion.net> domain name does not differentiate the domain name from the VICTORIA’S SECRET mark. See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel thus finds that Respondent’s <victoriasecretfashion.net> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain name. Once a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to provide evidence to the contrary. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); 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. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). This Panel finds that Complainant has made a prima facie case in support of its assertions. Respondent thus bears the burden of disproving Complainant’s claims. Respondent, however, has failed to submit a Response. 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) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). As such, the Panel will review the record for any circumstances that may confer rights or legitimate interests on Respondent.
Complainant alleges that Respondent is not commonly known by the disputed domain name. Panels have found that the WHOIS record for a disputed domain name, as well as the complainant’s contentions, are important factors in considering whether a respondent is commonly known by the disputed domain name. 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 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). Complainant argues that Respondent is not affiliated with or endorsed by Complainant and that Respondent is not authorized to be using the VICTORIA’S SECRET mark in any way. The WHOIS record for the <victoriasecretfashion.net> domain name lists “Meyriana Dwi Damayanti” as the registrant. The Panel finds that the evidence demonstrates that Respondent is not commonly known by the disputed domain name in accordance with Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s previous use of the disputed domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have previously held that the use of a disputed domain name to provide noncompeting links is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The <victoriasecretfashion.net> domain name displays links in advertisements to unrelated, adult-oriented websites. The Panel finds that Respondent’s previous display of unrelated links on the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant contends that the prior display of adult oriented material on the <victoriasecretfashion.net> domain name’s resolving website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <victoriasecretfashion.net> domain name displays adult oriented content. The panels in Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002), and Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003), found that using a disputed domain name to display adult oriented material is not within the protected realm of Policy ¶¶ 4(c)(i) and 4(c)(iii). Thus, the Panel finds that Respondent’s previous use of the disputed domain name to display adult oriented content is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Finally, Complainant argues that the current nonuse of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <victoriasecretfashion.net> domain name is currently inactive. Therefore, the Panel finds that the Respondent’s current failure to use the disputed domain name is neither a Policy ¶¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel holds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and previous use of the disputed domain name was done in order to take commercial advantage of the Complainant’s goodwill established in the VICTORIA’S SECRET mark. The <victoriasecretfashion.net> domain name is confusingly similar to Complainant’s mark. Internet users would likely have believed that Respondent’s resolving website was associated with Complainant. Presuming that the <victoriasecretfashion.net> domain name is affiliated with Complainant, the Internet users may click through the links on the website, which the Panel infers benefits Respondent. Therefore, the Panel finds that Respondent’s registration and prior use of the disputed domain name was done in order to profit from the confusion created as to the source, sponsorship, or affiliation of the <victoriasecretfashion.net> domain name pursuant to Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent’s prior display of adult-oriented content on the disputed domain name also demonstrates Respondent’s bad faith registration and prior use. Panels have held that adult-oriented material being displayed on a confusingly similar domain name is evidence of the respondent’s bad faith. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a[n] [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel finds that Respondent’s previous display of adult oriented content on the <victoriasecretfashion.net> domain name is evidence of Respondent’s registration and prior use having been done in bad faith under Policy ¶ 4(a)(iii).
Finally, Respondent’s registration and current non-use of the disputed domain name also constitute bad faith. In Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000), and DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panels held that the holding of an inactive website is adequate evidence of bad faith. Therefore, the Panel finds that Respondent’s registration of the <victoriasecretfashion.net> domain name and the subsequent inactive holding of the disputed domain name demonstrates that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel holds that Complainant satisfied 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 <victoriasecretfashion.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 5, 2011
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