Victoria's Secret Stores Brand Management, Inc. v. c/o victoria-secret-coupons.org / Domain Privacy Group, Inc.
Claim Number: FA1112001418051
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 c/o victoria-secret-coupons.org / Domain Privacy Group, Inc. (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoria-secret-coupons.org>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2011; the National Arbitration Forum received payment on December 1, 2011.
On December 2, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoria-secret-coupons.org> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 December 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@victoria-secret-coupons.org. Also on December 7, 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 January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the women’s apparel and beauty product brand VICTORIA’S SECRET, which it has used to operate more than 1,000 retail stores, and which has done business via the Internet since 1998.
Complainant owns trademark registrations on file with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (including Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the <victoria-secret-coupons.org> domain name on March 10, 2011.
Respondent’s disputed domain name resolves to a website displaying coupon codes for, and reproductions of, Victoria’s Secret gift cards, as well as links to third-party websites advertising “free” $1000 Victoria’s Secret gift cards in exchange for website visitors’ personal information.
Respondent’s <victoria-secret-coupons.org> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the <victoria-secret-coupons.org> domain name.
Complainant has not given Respondent permission to use Complainant’s VICTORIA’S SECRET mark.
Respondent does not have any rights to or legitimate interests in the <victoria-secret-coupons.org> domain name.
Respondent registered and uses the <victoria-secret-coupons.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the VICTORIA’S SECRET trademark under Policy ¶ 4 (a)(i) through its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”).
This is true whether or not Complainant has registered its mark in the country where Respondent resides or does business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
The disputed domain name <victoria-secret-coupons.org> is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The alterations made to the mark in forming the contested domain name, namely: (1) replacing the spaces between the words “victoria” and “secret” with hyphens, (2) omitting the apostrophe and the “s” from the end of “victoria,” (3) adding the generic term “coupons”, and (4) adding the generic top level domain (“gLTD”) “.com” are not sufficient to differentiate the disputed domain name from Complainant’s mark under the standards of the Policy. See Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar); see also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to a complainant’s THE BODY SHOP trademark); further see Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); moreover see Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have any rights to or legitimate interests in the <victoria-secret-coupons.org> domain name. Under Policy ¶ 4(a)(ii), Complainant is required make out a prima facie showing in support of this allegation, whereupon the burden shifts to Respondent to show that it has rights to or 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 a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)); to the same effect, see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Complainant has made out a sufficient prima facie case under this head of the Policy. Therefore, and because Respondent has failed to reply to the allegations filed in this proceeding, we may presume that Respondent does not have any rights to or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent had failed to invoke any circumstance which could demonstrate any rights to or legitimate interests in a domain name); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <victoria-secret-coupons.org> domain name and that Complainant has not given Respondent permission to use Complainant’s VICTORIA’S SECRET mark. Moreover, although the pertinent WHOIS information indicates that Respondent registered the disputed domain name under the name “c/o victoria-secret-coupons.org / Domain Privacy Group, Inc.,” in March of 2011, there is no evidence in the record to indicate that Respondent is or has been commonly known by the domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain name and so does not have rights to or legitimate interests in <victoria-secret-coupons.org> pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Skyline Displays, Inc. v. Hangzhou Skyi Display Equip. Co., FA 187706 (Nat. Arb. Forum Oct. 14, 2003) (“Despite the fact that Respondent lists itself as Hangzhou Skyi Display Equipment Co., Ltd. in its WHOIS contact information, there is no evidence presented to the Panel showing that Respondent is commonly known by the <skyidisplay.com> domain name prior to registering the domain name.”).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <victoria-secret-coupons.org> domain name is not done in connection with 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), and that the domain name resolves to a website displaying numerous links to various coupon codes and offers of $1,000 gift cards in exchange for website visitors’ personal information. In the circumstances here presented, we may comfortably presume that Respondent benefits commercially from the visits of Internet users to the websites resolving from those links. Respondent’s use of the domain in the manner alleged in the Complaint therefore does not amount to 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). See Victoria’s Secret Stores Brand Mgmt, Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that a respondent’s offers of a complainant’s gift cards in exchange for providing personal information and completing surveys 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 Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to lure Internet users to the resolving website, presumably for profit, is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Mandel, FA 1348092 (Nat. Arb. Forum Oct. 29, 2010) (finding that a respondent’s use of a disputed domain name to offer a VICTORIA’S SECRET gift card in exchange for personal information was an attempt to take advantage of the goodwill of Complainant’s mark for its own commercial, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv)).
For this reason, the Panel concludes that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <victoria-secret-coupons.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 17, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page