Victoria's Secret Stores Brand Management, Inc. v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
Claim Number: FA1202001428763
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 LAKSH INTERNET SOLUTIONS PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwvictoriassecret.com>, registered with Tirupati Domains & Hosting Pvt. Ltd.
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 February 9, 2012; the National Arbitration Forum received payment on February 9, 2012«DateHardCopy».
On February 10, 2012, Tirupati Domains & Hosting Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwvictoriassecret.com> domain name is registered with Tirupati Domains & Hosting Pvt. Ltd. and that Respondent is the current registrant of the name. Tirupati Domains & Hosting Pvt. Ltd. has verified that Respondent is bound by the Tirupati Domains & Hosting Pvt. 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 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@wwvictoriassecret.com. Also on February 10, 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 March 8, 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 operates retail and Internet-based stores which sell women’s lingerie, swimwear, apparel and beauty products.
Complainant owns registrations for the VICTORIA’S SECRET trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,146,199, registered January 20, 1981).
Respondent registered the contested <wwvictoriassecret.com> domain name on June 18, 2008.
The domain name resolves to a website that offers hyperlinks to websites which compete with the business of Complainant.
Respondent’s <wwvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the disputed <wwvictoriassecret.com> domain name.
Respondent is not affiliated with Complainant, and Respondent is not licensed or permitted to use Complainant’s VICTORIA’S SECRET trademark in any way.
Respondent does not have any rights to or legitimate interests in the domain name <wwvictoriassecret.com>.
Respondent both registered and uses the <wwvictoriassecret.com> 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 its VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i) by reason of 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), holding that, by registering a mark with the USPTO, a complainant established rights in the mark under Policy ¶ 4(a)(i). See also, to the same effect, AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent resides or does business. See, for example, 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 coun-try in which a respondent resides, only that it can establish rights in its mark by virtue of registration of the mark in some jurisdiction).
The <wwvictoriassecret.com> domain name is confusingly similar to Complain-ant’s VICTORIA’S SECRET trademark, because it incorporates the mark in its entirety, while adding “ww” and the generic top-level domain (“gTLD”) “.com,” and removing the apostrophe and spaces from the mark. These alterations of the mark, made in forming the domain name, are insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret v. Decal, FA 96539 (Nat. Arb. Forum Mar. 9, 2001), finding that a one-letter difference between a mark and a contested domain name did not serve to distinguish the <evictoriasecrets.com> domain name from the VICTORIA’S SECRET mark. Similarly, in Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002), a panel determined that the letters “www” are not distinct in the Internet realm, and thus rendered the <wwwmarieclaire.com> domain name confusingly similar to a complainant’s MARIE CLAIRE mark.
Moreover, the addition of a gTLD and the removal of an apostrophe and spaces do not distinguish the disputed domain name from Complainant’s mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish a domain name from the 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 of the mark of another in creating a domain name and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that the disputed domain name is confusingly similar to the VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), Complainant must supply a prima facie showing in support of this allegation, whereupon the burden shifts to Respondent to demonstrate that it has such rights or legitimate interests. 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 Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000):
Although Paragraph 4(a) of the Policy requires that the Complain-ant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.
Complainant has made a satisfactory prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, when a respondent fails to respond to a UDRP Com-plaint, a Panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the 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 asserts, and Respondent does not deny, that Respondent is not commonly known by the <wwvictoriassecret.com> domain name, and that Respondent is not affiliated with Complainant, and that Respondent is not licensed or permitted to use Complainant’s VICTORIA’S SECRET trademark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Laksh Internet Solutions Private Limited,” which does not resemble the contested domain name. On this record we conclude that Respondent is not commonly known by the <wwvictoriassecret.com> domain name so as to have rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in those domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <wwvictoriassecret.com> domain name in a manner not associated with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, as demonstrated by the presence of hyperlinks to the websites of businesses operating in competition with that of Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from the operation of the website resolving from the disputed domain name in the manner alleged in the Complaint. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), finding that using a domain name which was confusingly similar to the mark of another to maintain a web page with hyperlinks resolving to websites competing with the business of a complainant is not a bona fide offering of goods or sevices or a legitimate noncommercial or fair use. See also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003), finding that using a domain name to divert Internet users to a web page with third-party links from which a domain name registrant presumably receives compensation for the “click-through” traffic did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Accordingly, we conclude that Respondent’s use of the domain name to divert consumers to its own website and to offer hyperlinks to the websites of business-es competing with that of Complainant 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).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
It is evident from the record that Respondent registered and uses the disputed domain name to attract Internet traffic to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the possibility of a relationship between Complainant’s business and the domain name. This dem-onstrates that Respondent registered and uses the domain name in bad faith within the contemplation of Policy ¶ 4(b)(iv). See, for example, TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003):
[M]any Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the … domain name, which features links for competing … websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
See also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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 <wwvictoriassecret.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 22, 2012
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