Victoria's Secret Stores Brand Management, Inc. v. Kannan Dhanaraj
Claim Number: FA1201001424675
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 Kannan Dhanaraj (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretcouponsx.com>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2012; the National Arbitration Forum received payment on January 16, 2012.
On January 16, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretcouponsx.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 January 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2012 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@victoriasecretcouponsx.com. Also on January 18, 2012, 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 February 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <victoriasecretcouponsx.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 <victoriasecretcouponsx.com> domain name.
3. Respondent registered and used the <victoriasecretcouponsx.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, swimwear, outwear, and gift cards through its retail stores, catalogues, and online websites. Complainant owns numerous trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”), including the following:
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995; &
Reg. No. 3,490,533 registered August 5, 2008.
Respondent, Kannan Dhanaraj, registered the <victoriasecretcouponsx.com> domain name on June 1, 2011. The disputed domain name resolves to a website featuring information about Complainant and its products and a variety of pay-per-click links, including an advertisement for a free VICTORIA’S SECRET gift card.
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 owns numerous trademark registrations for the VICTORIA’S SECRET mark with the USPTO.
Previous panels have held that USPTO trademark registrations sufficiently prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), even when Respondent lives outside the country where the mark is registered. 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); 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 concludes that Complainant owns rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <victoriasecretcouponsx.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET. A comparison of the disputed domain name with the mark reveals the following minor changes: the removal of the apostrophe, the final letter “s” in “victoria’s,” and the space between terms; the addition of the generic term “coupons” and the letter “x”; and the attachment of the generic top-level domain (“gTLD”) “.com.” Prior panels have held that removing spaces and punctuation like apostrophes does not negate a finding of confusing similarity. 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 Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Past UDRP cases have also shown that adding or deleting single letters and adding generic terms do not differentiate a disputed domain name. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); 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); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark). Finally, there is substantial precedent indicating that an attached gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore determines that Respondent’s <victoriasecretcouponsx.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has shown a prima facie case that Respondent does not have rights and legitimate interests in the disputed domain name thereby shifting the burden of proving rights and legitimate interests to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interests in the subject domain names.”). However, Respondent failed to respond to the Complaint. Therefore, the Panel may assume that Complainant’s allegations are true and find that Respondent lacks rights and legitimate interests. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark in any way. The WHOIS information for the <victoriasecretcouponsx.com> domain name identifies the registrant as “Kannan Dhanaraj,” which suggests no nominal connection to the disputed domain name. Based on these arguments and the lack of other evidence supporting Respondent’s position, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant asserts that Respondent’s <victoriasecretcouponsx.com> domain name resolves to a website with content about Complainant and numerous advertisements, links, and graphics referencing coupons or advertising VICTORIA’S SECRET gift cards. Complainant argues that after clicking on these advertisements, the Internet users are redirected to a third-party website that offers prizes in exchange for participating in a survey and providing personal information. Complainant contends that Respondent receives referral fees from these advertisements and the third-party website. The Panel finds that Respondent’s use of the resolving website, for its own commercial benefit, to display links and offer gift cards in exchange for survey participation and providing personal information does not satisfy Policy ¶¶ 4(c)(i) or 4(c)(iii) as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also
Victoria’s Secret Stores Brand Mgmt., Inc. v. Miller, FA 1333659 (Nat. Arb. Forum Aug. 12, 2010) (“The Panel finds that Respondent’s previous use of the disputed domain name to redirect Internet users to a third-party website that asks Internet users to provide personal information and to complete sponsored offers from other businesses to receive a $250 VICTORIA’S SECRET gift card 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 finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s <victoriasecretcouponsx.com> domain name uses the VICTORIA’S SECRET mark to drive traffic to the resolving website, which contains content about Complainant and numerous link advertisements for a VICTORIA’S SECRET gift card. Complainant argues that Respondent likely receives referral fees for Internet users who click on the advertisements, as the advertisements redirect Internet users to a third-party website offering prizes in exchange for providing personal information and completing a survey. The Panel concludes that Respondent’s activities at the disputed domain name indicate that Respondent has attempted to use Complainant’s mark to attract consumers and create confusion about Complainant’s affiliation with the resolving website for its own commercial gain, which is evidence of 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 Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Tech Enters., FA 1369407 (Nat. Arb. Forum Feb. 25, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the resolving website offered Internet users the chance to receive a VICTORIA’S SECRET gift card for participation in a survey and providing contact information).
Complainant argues that due to the content on the resolving website, it is clear that Respondent had actual knowledge of Complainant’s mark at the time it registered the disputed domain name. The Panel finds that Respondent’s registration of the disputed domain name while it had actual knowledge of Complainant and its mark is bad faith registration under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy ¶ 4(a)(iii) has been 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 <victoriasecretcouponsx.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 22, 2012
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