Victoria's Secret Stores Brand Management, Inc. v. Bolama Technologies Limited / Mr Bolama
Claim Number: FA1201001427044
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 Bolama Technologies Limited / Mr Bolama (“Respondent”), Mauritius.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecrte.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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.
Honorable Paul A. Dorf (Ret.)as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2012; the National Arbitration Forum received payment on January 30, 2012.
On January 30, 2012, Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <victoriassecrte.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. D/B/A Publicdomainregistry.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 January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@victoriassecrte.com. Also on January 31, 2012, 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 February 28 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <victoriassecrte.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 <victoriassecrte.com> domain name.
3. Respondent registered and used the <victoriassecrte.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., advertises and sells women’s lingerie and apparel, personal care and beauty products, swimwear, and outerwear. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’ SECRET mark dating back to 1981 (e.g. Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Bolama Technologies Limited / Mr Bolama, registered the disputed domain name on April 26, 2008. The disputed domain name resolves to a pay-per-click site featuring links to third-party businesses, some of which compete with Complainant.
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 contends that its registration of the VICTORIA’S SECRET mark with the USPTO (e.g. Reg. No. 1,146,199 registered January 20, 1981) is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). The consensus among previous panels is that registration of a mark with the USPTO does confer rights to the trademark holder. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). The Panel holds that Complainant has established rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i), even despite the fact that Respondent operates in a country in which Complainant does not have trademark rights. 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).
Complainant further contends that Respondent’s <victoriassecrte.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). The disputed domain name transposes the letters “e” and “t” in Complainant’s mark, while omitting the apostrophe and space between the words and adding a generic top-level domain (“gTLD”). The transposition of two letters in a complainant’s mark does not distinguish a disputed domain name under Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Likewise, the omission of an apostrophe in a complainant’s mark cannot remove a disputed domain name from the realm of confusing similarity. See 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.”). Finally, the omission of the space between words in a complainant’s mark and the affixation of a gTLD can never distinguish a disputed domain name. See 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 determines that Respondent’s <victoriassecrte.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel concludes that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of presenting a prima facie case in support of its claims. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”). The Panel finds Complainant to have satisfied this burden. Respondent in this case has failed to meet its burden of providing a Response, which some panels have held demonstrates a lack of rights or legitimate interests in a disputed domain name. See 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, continue to weigh the reminder of the evidence in the record according to the Policy ¶ 4(c) factors in order to determine whether Respondent does in fact have such rights or legitimate interests.
Complainant argues that Respondent is not commonly known by the <victoriassecrte.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Bolama Technologies Limited / Mr Bolama. ” The Panel fails to find sufficient similarity between “Bolama Technologies Limited / Mr Bolama” and <victoriassecrte.com> to support the notion that Respondent is commonly known by the disputed domain name. Additionally, Complainant states that it has not authorized Respondent’s use of the VICTORIA’S SECRET mark in any way. Respondent’s failure to produce a Response results in an absence of any evidence suggesting that Respondent is commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). The Panel must conclude that Respondent is not commonly known by the <victoriassecrte.com> domain name within the meaning of Policy ¶ 4(c)(ii). 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further alleges that Respondent lacks rights or legitimate interests in the <victoriassecrte.com> domain name because Respondent’s use of the disputed domain name can be considered 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). Complainant asserts that Respondent’s domain name resolves to a “link-farm site . . . displaying links to businesses unrelated to Complainant, including competitors of Complainant.” Complainant contends that Respondent receives pay-per-click revenue from this use of the website. The Panel notes that such links are housed under headings such as, “Designer Fashion,” “Victorias Secret,” “Ford Auto Dealer,” “Mortgage,” and others. The Panel finds that such use of the disputed domain name does not constitute 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has not presented evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii). However, the Panel notes that such bad faith can be found through Complainant’s evidence and arguments. Complainant’s evidence shows that Respondent’s domain name displays third-party links to websites offering similar products and services. The Panel infers that such use may impact Complainant’s business as Internet users may be lured to these third-party websites rather than to Complainant’s official website. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Respondent is using the disputed domain name to host numerous third-party links to competing and unrelated businesses as discussed above. Complainant argues that Respondent’s motivation in registering and using the disputed domain name is to create confusion on the part of Internet users as to the source or sponsorship of Respondent’s resolving website to drive Internet traffic to its website. Complainant contends that Respondent then receives commercial compensation for each misdirected Internet user. The Panel finds that Respondent’s use of the disputed domain is evidence that it registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the VICTORIA’S SECRET marks. Complainant argues that Respondent’s use of the confusingly similar domain name to provide links for similar products and services indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel concludes that 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 <victoriassecrte.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: March 13, 2012
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