Victoria's Secret Stores Brand Management, Inc. v. CP Networks
Claim Number: FA1203001434083
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 CP Networks (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modelosvictoriasecret.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2012; the National Arbitration Forum received payment on March 12, 2012.
On March 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <modelosvictoriasecret.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@modelosvictoriasecret.com. Also on March 15, 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 April 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof (collectively, the “VICTORIA’S SECRET Marks”), which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards. The mark VICTORIA‟S SECRET and variations thereof are duly registered in the United States Patent and Trademark Office under 32 valid, subsisting and uncancelled registrations, and Complainant is the owner thereof by registration and/or assignment.
The Respondent’s disputed domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name incorporates Complainant’s VICTORIA’S SECRET mark in its entirety and merely prefaces it with the generic term “modelos.” Respondent creates a likelihood of confusion with Complainant’s mark. Respondent has no rights or legitimate interests in the domain name. Respondent is using the popularity of Complainant’s mark to draw traffic to the disputed site and its advertisements. Respondent commercially benefits from the site resolving from the disputed domain name.
Respondent is using the domain name to confuse consumers and divert them from Complainant’s site and its advertising. Respondent does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent is not commonly known by the domain name. Complainant’s mark existed more than three decades before Respondent registered the disputed domain name.
The disputed domain name was registered and used in bad faith. Respondent was aware of Complainant’s trademark when Respondent registered the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the VICTORIAS’S SECRET mark at all times relevant to this proceeding. The trademark is confusingly similar to Respondent’s disputed domain name.
Respondent is without authority or perceived authority to use Complainant’s trademark.
Respondent illegally trades off the popularity of the VICTORIA’S SECRET and its owner’s goodwill to derive benefit from “click through” advertisement.
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."
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.
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.”).
The Respondent’s domain name is confusingly similar to a trademark in which the Complainant has rights.
Complainant shows that it has numerous trademark registrations with the USPTO for, and related to, its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered on January 20, 2981). The Panel therefore concludes that Complainant has established rights in the VICTORIA’S SECRET mark pursuant to Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Additionally, given that the Respondent likely resides outside of the United States, the Panel notes that a complainant need not register its trademark in the country in which respondent resides or operates to establish Paragraph 4(a)(i) rights in a trademark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Wal-Mart Stores, Inc. v. Sto
Respondent’s disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The at-issue domain name simply adds the generic word “modelos,” meaning “models” in Spanish. The English equivalent of the domain name is thus “Victoria’s Secret Models.” This addition of a descriptive term is insufficient to distinguish the mark from the at-issue domain name. See Victoria’s Secret Stores Brand Management, Inc. v. Tepelboym, Case No. FA 1393068 (Nat. Arb. Forum July 11, 2011) (finding victoriassecretmodels.net confusingly similar to the VICTORIA‟S SECRET mark); Victoria's Secret Stores Brand Management, Inc. v. Markus Sanarko, FA 1374217 (Nat. Arb. Forum March 29, 2011) (finding victoriasecretbathingsuits.com and victoriasecretbikini.com to be confusingly similar to the VICTORIA’S SECRET mark). The disputed domain name, also without significant to the Panel’s inquiry, lacks the space between the two terms comprising Complainant’s mark, the apostrophe, and the final letter “s” in “victoria’s” and appends the generic top-level domain (“gTLD”) “.com.” See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Even cumulatively, these alternations to Complainant’s well know trademark are insufficient to differentiate the at-issue domain name from the mark. The Complainant’s trademark and the domain name are thus confusingly similar under Policy ¶4(a)(i)
Respondent lacks rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends and the Panel agrees that Respondent is not commonly known by the at-issue domain name. WHOIS information for the domain name identifies the registrant as “CP Networks” which is not at all similar to the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). See also 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).
Complainant has not licensed, transferred, assigned or otherwise authorized Respondent to use any of its marks, or any variations thereof, as domain names on the Internet or otherwise. The Respondent’s business use of the website referenced by the disputed domain name impermissibly trades on Complainant’s mark and goodwill, and is not a bona fide commercial use of the domain name. Respondent’s foul business use does not, and cannot, act to demonstrate Respondent’s rights in the domain name. See Tepelboym, supra (website featuring complainant’s promotional videos surrounded by advertisements was 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)); Westcor Santan Village LLC v. Letro, FA 1248888 (Nat. Arb. Forum April 2, 2009) (finding that a web site purporting to offer a blog related to Complainant while also including advertising for third parties was not a bona fide use)
Therefore given the forgoing and without any controverting evidence in the record, Complainant exceedingly satisfies its burden regarding Respondent’s lack of rights and interests in the disputed domain name.
The domain name was registered and is being used in bad faith.
Respondent uses Complainant’s VICTORIA’S SECRET mark in the at-issue domain name to drive traffic to its referenced website. The site contains advertising for businesses unrelated to Complainant. It is reasonable to assume that Respondent commercially benefits from this website or at least intents to. Therefore the Panel concludes that Respondent registered the at-issue domain name with the intent to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademark(s) as to the source, sponsorship, affiliation, or endorsement of the website and its domain name, thereby misleadingly diverting Internet traffic to website for commercial gain. This circumstance evidences Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv). See also Victoria’s Secret Stores Brand Management, Inc. v. Sanders, FA 1288579 (Nat. Arb. Forum Nov. 19, 2009) (use of disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy, ¶ 4(b)(iv)).
Respondent’s bad faith is further evidenced by its unauthorized use of Complainant’s copyrighted VICTORIA’S SECRET promotional photographs. Although Respondent was forced to remove these photographs from its website after Complainant filed a DMCA notice, the fact that they were removed does nothing to alter the implication from their prior presence.
It is clear that Respondent was aware of Complainant’s well known trademark VICTORIA’S SECRET when Respondent registered the at-issue domain name given the fame of the VICTORIA’S SECRET trademark. A review of the Respondent’s website piles on additional support showing that Respondent clearly knew of the Complainant. The Panel agrees with Complainant: there is no conceivable reason for Respondent to have registered the domain name other than to trade off of the reputation and goodwill of Complainant’s VICTORIA’S SECRET mark. See V Secret Catalogue, Inc. v. PM Websites, FA 94652 (Nat. Arb. Forum, June 8, 2000) (VICTORIA’S SECRET mark has acquired significant goodwill, wide public recognition and fame); see also Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”). See Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (finding “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate”). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. § 1072; Policy, ¶ 4(b)(iv); see also Mastercard Int’l. Inc. v. Total Card Inc., D2007-1411 (WIPO Nov. 28, 2007) (registration of domain name containing registered and/or famous trademark is evidence of bad faith); National Rifle Association of America v. Future Media Architects, Inc., FA 781430 (Nat. Arb. Forum Oct. 13, 2006) (same).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be Granted.
Accordingly, it is Ordered that the <modelosvictoriasecret.com> domain name be TRANSFERRED from Respondent to Complainant
Paul M. DeCicco, Panelist
Dated: April 20, 2012
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