Victoria's Secret Stores Brand Management, Inc. v. MaYun
Claim Number: FA1201001426135
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 MaYun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretbra.com>, registered with HANG ZHOU E-BUSINESS SERVICES CO.LTD.
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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2012; the National Arbitration Forum received payment on January 24, 2012. The Complaint was submitted in both Chinese and English.
On February 5, 2012, HANG ZHOU E-BUSINESS SERVICES CO.LTD. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretbra.com> domain name is registered with HANG ZHOU E-BUSINESS SERVICES CO.LTD. and that Respondent is the current registrant of the name. HANG ZHOU E-BUSINESS SERVICES CO.LTD. has verified that Respondent is bound by the HANG ZHOU E-BUSINESS SERVICES CO.LTD. 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 February 13, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 5, 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@victoriassecretbra.com. Also on February 13, 2012, the Chinese language 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 March 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretbra.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 <victoriassecretbra.com> domain name.
3. Respondent registered and used the <victoriassecretbra.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., operates retail and online stores throughout the United States, which sell women’s lingerie, apparel, swimwear, and personal care items, and uses its VICTORIA’S SECRET mark in connection with its products, fashion shows, advertising, and website. Complainant has multiple trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Ma Yun, registered the <victoriassecretbra.com> domain name on April 21, 2010. The domain name resolves to a website that displays hyperlinks to competing businesses and websites unrelated to Complainant’s business.
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 many trademark registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). The Panel holds that, by registering the VICTORIA’S SECRET mark with the USPTO, Complainant has effectively established its rights in the mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (determining that, by submitting proof of registration with the USPTO, a complainant establishes its right in the mark pursuant to Policy ¶ 4(a)(i)); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Further, the Panel finds that Complainant is not required to register its mark in the same country where Respondent resides and operates, as long as Complainant can demonstrate rights in the mark in some jurisdiction. See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant claims that Respondent’s <victoriassecretbra.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the domain name uses Complainant’s mark in its entirety and adds only the descriptive word “bra” and the generic top-level domain (“gTLD”) “.com,” while removing the spaces and the apostrophe from the mark. The panel in Victoria’s Secret Stores Brand Mgmt., Inc. v. Sanarko, FA 1374217 (Nat. Arb. Forum March 29, 2011), stated that attaching descriptive terms, such as “bikini,” which describe Complainant’s products, to Complainant’s mark fails to distinguish the domain name from Complainant’s VICTORIA’S SECRET mark. In Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), the panel concluded that “[p]unctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.” Finally, the panel in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), found that adding a gTLD to a mark is insufficient to distinguish a domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel holds that Respondent’s <victoriassecretbra.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent holds no rights or legitimate interests in the <victoriassecretbra.com> domain name. This contention must be sustained by a prima facie showing by Complainant pursuant to the requirement of Policy ¶ 4(a)(ii). After Complainant successfully makes a prima facie case, Respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (emphasizing that “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” Policy ¶ 4(a)(ii); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel determines that Complainant has made a prima facie case. Due to Respondent’s failure to submit a reply to these proceedings, the Panel may presume that Respondent has no rights or legitimate interests in the domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondent’s lack of reply can be interpreted as an acknowledgement that it has no rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel will, however, consider the evidence on record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <victoriassecretbra.com> domain name, because the WHOIS information identifies the domain name registrant as “Ma Yun,” which gives no indication that Respondent is commonly known by the domain name. In Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001), the panel determined that there are no rights or legitimate interests in a domain name where a distinct and famous trademark is used. Additionally, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel found that when the WHOIS information gave no support to the conclusion that respondent was commonly known by the disputed domain name, and no other evidence on record provided any evidence thereof, the respondent failed to demonstrate it is commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <victoriassecretbra.com> domain name because Respondent provides no indication, including in the WHOIS information, that it is commonly known by the disputed domain name.
Complainant argues that Respondent’s disputed domain name corresponds to a website that features advertisements and search listings for business unrelated to Complainant, some of which are competitors of Complainant’s business, and contends that such use is not in connection with a bona fide offering of goods or services, and that it is not a legitimate noncommercial or fair use of the domain name. Under WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), use of a disputed domain name to divert website visitors to unrelated websites for which respondent presumably receives a “pay-per-click” fee is not a bona fide offering of goods or services under the Policy. Additionally, the panel in TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), stated that use of the complainant’s mark to lead Internet users to a website with links whose services competed with the complainant’s business is not a bona fide offering of goods or services. The Panel here finds that Respondent’s use of the domain name to send Internet traffic to its site and offer unrelated and competing hyperlinks does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s uses the confusingly similar <victoriassecretbra.com> domain name to attract Internet users to its website in order to make a profit. Complainant alleges that the domain name insinuates an affiliation with Complainant’s business, creating a likelihood of confusion as to the sponsorship of the website. The Panel holds that using a confusingly similar domain name to offer links to third-party websites in order to profit from that confusion demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See 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); BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant claims that Respondent must have had constructive knowledge of Complainant's rights in the VICTORIA’S SECRET mark when Respondent registered the disputed domain name, because of Complainant’s extensive list of trademark registrations. Complainant also contends that, because of the existence of the multiple trademark registrations, Respondent has at least constructive knowledge of the mark. The Panel does not consider claims regarding constructive knowledge as it is established that constructive knowledge is insufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel does find, however, that Respondent registered the <victoriassecretbra.com> domain name domain name with actual knowledge of Complainant’s rights in the mark, which demonstrates bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")
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 <victoriassecretbra.com> domain name be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
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