National Arbitration Forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Sam Taylor

Claim Number: FA1003001310572

 

PARTIES

Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington, D.C., USA.  Respondent is Sam Taylor (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretonline.info>, registered with Enom.

 

PANEL

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.

 

James Bridgeman as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2010.

 

On March 2, 2010, Enom confirmed by e-mail to the National Arbitration Forum that the <victoriasecretonline.info> domain name is registered with Enom and that the Respondent is the current registrant of the name.  Enom has verified that Respondent is bound by the Enom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 29, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@victoriasecretonline.info by e-mail.

 

A timely Response was received on March 26, 2010 but in electronic format only.

 

 

On April 5, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant in this administrative proceeding is the United States record owner of the VICTORIA’S SECRET mark and variations thereof, (collectively, the “VICTORIA’S SECRET Marks”), which are licensed by Complainant to associated companies within its group.

 

Complainant submits that the VICTORIA’S SECRET marks 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, sold through a chain of more than 1,000 Victoria’s Secret retail stores located throughout the United States.

 

Complainant also uses the VICTORIA’S SECRET marks in its worldwide advertising and sales of a wide range of items bearing the mark in connection with Complainant’s print mail order catalogue and its e-commerce web site located at victoriassecret.com. In 2008, more than $5.6 billion of merchandise was sold in connection with or bearing the VICTORIA’S SECRET marks.

 

Complainant first registered the domain name <victoriassecret.com> on January 23, 1995 and Complainant’s VICTORIA’S SECRET mark has been prominently used on the Internet since at least 1998. In February 1999, Complainant launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast.  Subsequently on May 18, 2000, more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET.

 

Complainant is the owner of numerous registrations and pending applications for registration of the VICTORIA’S SECRET trademark and variations thereof in the United States Patent and Trademark Office including United States Trademark Registration number 1,146,199 VICTORIA’S SECRET issued January 20, 1981. Complainant has submitted evidence of these registrations in an annex to the Complaint.

 

Complainant submits that as a result of this widespread, long-time, continuous and prominent use the VICTORIA’S SECRET marks have acquired significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified.  See V Secret Catalogue et al.  v. Artco Inc., FA94342 (Nat. Arb. Forum, May 9, 2000) (recognizing VICTORIA’S SECRET as a famous mark).

 

Complainant submits that the disputed domain name <victoriasecretonline.info> is confusingly similar to Complainant’s VICTORIA’S SECRET trademark and the domain name used by Complainant in connection with the legitimate sale of products bearing the VICTORIA’S SECRET marks, namely <victoriassecret.com>.

 

Complainant submits that the disputed domain name <victoriasecretonline.info> incorporates Complainant’s VICTORIA’S SECRET mark in its entirety, absent the apostrophe and space (which cannot be included in a domain name) and the “s” in “Victoria’s.” The only other difference between the disputed domain name <victoriasecretonline.info> and Complainant’s mark is that Respondent has appended the generic word “online” to the domain name.

 

Complainant submits that by registering a domain name that merely adds the common word “online” to the VICTORIA’S SECRET mark, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the web site to which it resolves.  See Victoria’s Secret Stores Brand Management, Inc. v. PabloPalermao, FA1191651 (Nat. Arb. Forum July 9, 2008) (finding victoriasecretangel.com to be confusingly similar to Complainant’s VICTORIA’S SECRET mark; stating, “It is well-established that the inclusion of a [generic top-level domain] and the omissions of punctuation, letters and spaces do not sufficiently distinguish a disputed domain name.”); see also Victoria’s Secret Stores Brand Management, Inc. v. Russell Adams, FA1291439 (Nat. Arb. Forum Nov. 30, 2009) (finding freevictoriasecretsoffer.info to be confusingly similar to Complainant’s VICTORIA’S SECRET mark).

 

Complainant submits that the likelihood of confusion is heightened by the choice of the generic word added to Complainant’s mark, namely “online.”  Consumers might believe that the disputed domain name <victoriasecretonline.info> leads to an official VICTORIA’S SECRET web site i.e., the “online” version of the Victoria’s Secret stores.  See, e.g., Toastmasters Int’l.  v. Vaught, FA209571 (Nat. Arb. Forum Dec.  22, 2003) (addition of the term “online” does not distinguish a domain name from complainant’s mark because “online” merely signifies that an entity is on the Internet).

 

Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name <victoriasecretonline.info>.

 

Complainant alleges that as of the date on which this Complaint was originally filed, February 8, 2010, the disputed domain name <victoriasecretonline.info> resolved to a web site (the “Old Site”) that contained a virtually exact replica of the official Victoria’s Secret web site, including Complainant’s VICTORIA’S SECRET marks and copyrighted photographs.  Complainant has furnished this Panel with printouts from Respondent’s Old Site and printouts from Complainant’s web site as an annex to the Complaint and invites this Panel to make a comparison between the two sites.  Complainant submits that it appears that Respondent’s Old Site had an invisible frame into which Respondent copied or pulled or otherwise displayed Complainant’s web site.  In this regard Complainant refers to a copy of the source code for the Old Site, submitted as an annex to the Complaint.  Complainant submits that the only difference between the appearances of the two sites was the page title and the URL visible in the browser’s address bar.  The title of Respondent’s Old Site was “Victoria Secret Gift Card Giveaway.”

 

Complainant alleges that currently the disputed domain name <victoriasecretonline.info> resolves to a web site (the “New Site”) offering links to various businesses, some of which compete with Complainant.  Viewing the New Site also generates pop-up advertisements.  Complainant has furnished printouts from the New Site as an annex to the Complaint.

 

Complainant states that Respondent is not affiliated with Complainant, nor has he been licensed or authorized to use the VICTORIA’S SECRET Marks in domain names, on any web site, or in any other manner.  In addition, neither the Old Site nor the New Site are affiliated with or endorsed or authorized by Complainant, and Respondent is not authorized to frame or copy Complainant’s VICTORIA’S SECRET web site.

 

Complainant states that it is not clear why Respondent was previously displaying Complainant’s site.  Based on the title of the Old Site, “Victoria Secret Gift Card Giveaway,” Complainant is concerned that Respondent was attempting to build traffic to his site at the disputed domain name <victoriasecretonline.info> in preparation for using it for an infringing gift card advertising site or phishing site to collect visitors’ personal and financial information; or Respondent may have intended to drive traffic to the Old Site in order to attract advertising.  Complainant states that in any event, on information and belief, Respondent was and is using the disputed domain name <victoriasecretonline.info> to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site to his own site for commercial gain.  Such usage of Complainant’s mark to divert Internet traffic from Complainant’s site to Respondent’s and derive revenue therefrom does not constitute use in connection with a bona fide offering of goods or services.  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 web site that displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).  Thus, Respondent is not using the disputed domain name <victoriasecretonline.info> in connection with a bona fide offering of goods or services.  See Policy ¶ 4(c)(i).

 

Further, on information and belief, Respondent is not commonly known by the disputed domain name <victoriasecretonline.info> either as a business, individual, or other organization.  See Policy, ¶ 4(c)(ii).  Respondent is listed in the disputed domain name’s registration details as Sam Taylor.  Nothing in Respondent’s WHOIS information implies that Respondent is “commonly known” by the disputed domain name <victoriasecretonline.info>. 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).  In addition, Respondent registered the disputed domain name <victoriasecretonline.info> more than thirty years after Complainant had begun using its VICTORIA’S SECRET marks; more than fifteen years after Complainant registered the domain name <victoriassecret.com> for its e-commerce web site; and long after the VICTORIA’S SECRET marks became famous.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).

 

Complainant alleges that Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant further alleges that on information and belief, the sole reason Respondent has chosen to register the <victoriasecretonline.info> domain name is to misleadingly trade off the fame of the VICTORIA’S SECRET Marks in order to divert Internet traffic from Complainant’s web site to Respondent’s for commercial gain.  See Policy, ¶ 4(c)(iii).

 

Complainant submits that the disputed domain name <victoriasecretonline.info> was registered and is being used in bad faith. Complainant submits that Respondent has used and is using Complainant’s VICTORIA’S SECRET marks in the disputed domain name <victoriasecretonline.info> to drive Internet traffic to a web site not owned or authorized by Complainant for commercial gain.  Thus, Complainant argues that upon information and belief, Respondent registered the disputed domain name <victoriasecretonline.info> with the intent to attract Internet users to Respondent’s web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name <victoriasecretonline.info> and Respondent’s web site, thereby misleadingly diverting Internet traffic from Complainant’s web site to Respondent’s web site for commercial gain.  This use of the disputed domain name amounts to bad faith registration and use. See Policy, ¶ 4(b)(iv); see also U.S. Office of Personnel Mgmt. v. MS Technology Inc., FA198898 (Nat. Arb. Forum Dec.  9, 2003) (finding bad faith where respondent, inter alia, framed complainant’s site without complainant’s authorization).

 

Complainant submits that Respondent’s previous use of the disputed domain name <victoriasecretonline.info> to point to a web site that displayed Complainant’s web site created a likelihood of confusion by leading visitors to believe that the disputed domain name and Respondent’s Old Site were affiliated with or endorsed or sponsored by Complainant.  Nothing on Respondent’s Old Site disclaimed a relationship with Complainant.  See Houghton Mifflin Co.  v. The Weathermen, Inc., D2001-0211 (WIPO April 25, 2001) (using Complainant’s marks in domain name and prominently on web site without disclaiming a relationship with Complainant constitutes bad faith).

 

Complainant alleges that visitors to Respondent’s Old Site were likely to believe that it was affiliated with Complainant, and by extension that the disputed domain name <victoriasecretonline.info> is owned and controlled by Complainant. Complainant also alleges that such visitors were thus likely to believe that any site appearing at the disputed domain name is also authorized by Complainant. 

 

Complainant submits that it is concerned that Respondent may attempt to capitalize on this confusion by using the disputed domain name as the address for a phishing site or otherwise taking advantage of the consumer confusion the Old Site created for commercial gain.  Complainant submits that while Respondent’s Old Site is down, nothing is preventing Respondent from reposting it.  In addition, because Complainant has not endorsed or authorized either the Old Site or the New Site, and Complainant has no control over Respondent, the disputed domain name, or whatever web site that the Respondent may choose to direct the disputed domain name, Respondent’s use of the disputed domain name leads to a loss of control by Complainant over its VICTORIA’S SECRET marks, thereby damaging the marks. Complainant submits that it follows that the disputed domain name <victoriasecretonline.info>, the Old Site and the New Site infringe and potentially tarnish the VICTORIA’S SECRET marks.

 

Complainant further submits that it is clear from the content of Respondent’s Old Site that Respondent is aware of Complainant’s VICTORIA’S SECRET marks.  Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark.  See 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.”).

 

Complainant argues that 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 trademarks is evidence of bad faith); see also Nat’l Rifle Ass’n of Am. v. Future Media Architects, Inc., FA781430 (Nat. Arb. Forum Oct. 13, 2006) (same). 

 

Finally Complainant submits that Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C.  § 43(d), et seq.

 

B. Respondent

 

On Friday, March 26, 2010 Respondent sent a brief and informal Response in the form of an email to the National Arbitration Forum and the Complainant in the following terms:  “I am writing to inform everyone that I am complying with the transfer/proceeding and  have no problems in doing so. As you can see I have been proactive on solving this issue. The reason I wanted to get this done early is because I have neither time or money for this at all.  So with that being said please take this as my formal response.”

 

 

FINDINGS

Having considered the Complaint and the Response this Panel determines that for reasons set out below:

 

-         the disputed domain name <victoriasecretonline.info> registered by the Respondent is identical or confusingly similar to the trademark VICTORIA’S SECRET in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name has been registered and is being used in bad faith;

 

-         Complainant is the registered owner of United States Trademark registration number 1,146,199 VICTORIA’S SECRET registered on January 20, 1981 in international class 25 for “womens lingerie” claiming first use in commerce on June 2 1977;

 

-         Complainant is the owner of the domain name <victoriassecret.com> registered on January 23, 1995;

 

-         Complainant’s VICTORIA’S SECRET mark has been prominently used on the Internet since at least 1998; and

 

-         the disputed domain name <victoriasecretonline.info> was created on January 22, 2010.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Preliminary Procedural Issues

The Response was filed in electronic form only and Respondent was therefore technically in default. In such circumstances panels have taken different approaches. See, e.g., Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where Respondent submitted a timely Response electronically, but failed to submit a hard copy of the Response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).

 

This Panel is of the view that neither the process nor the Complainant is prejudiced by the Panel admitting and considering the Response.

 

The Response could be construed as an implied consent by Respondent to transfer the domain name to Complainant, but it is not an unambiguous express consent. Furthermore Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel.

 

In the circumstances this Panel has decided to admit and consider the Response and to proceed to make a decision on the merits.

 

Identical and/or Confusingly Similar

Complainant has established to the satisfaction of this Panel that it has substantaial rights in the VICTORIA’S SECRET trademark at common law through extensive use of the trademark in the marketing and sale of garments through retail outlets, catalogues and on the Internet.

 

Complainant is furthermore the registered owner of the abovementioned United States Trademark registration number 1,146,199 VICTORIA’S SECRET and other registrations at the USPTO of trademarks incorporating the words VICTORIA’S SECRET. 

 

This Panel is satisfied that Complainant has established that it has rights in the VICTORIA’S SECRET for the purposes of Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights 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)).

 

While there is a number of differences between the disputed domain name and Complainant’s mark, namely the deletion of the apostrophe and the space between the words, the omission of the letter “s,”  the addition of the generic term “online,” and the affixation of the generic top-level domain (“gTLD”) “.info,” this Panel nonetheless accepts Complainant’s submissions that the disputed domain name <victoriasecretonline.info> is confusingly similar to Complainant’s VICTORIA’S SECRET trademark. 

 

In the present case, the deletion of both the apostrophe and the space between words are insufficient changes to prevent confusing similarity under Policy ¶ 4(a)(i).  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.”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation 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.”). 

 

Furthermore in the present Complaint, the omission of the single letter “s” does not distinguish the disputed domain name from Complainant’s mark. In a similar case involving the VICTORIA’S SECRET trademark Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) the panel found the domain name <victoriasecret.com> to be confusingly similar to the VICTORIA’S SECRET mark.   

 

The addition of the generic term “online” does not create enough distinctiveness between Respondent’s disputed domain name and Complainant’s mark to satisfy Policy ¶ 4(a)(i) and may in fact even add to the likelihood of confusion in the context of use on the Internet.  See, for example, the decision of the panel in Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).  

 

Finally, it is genrally accepted that when making a comparison between a domain name and a trademark under the Policy, the addition of the gTLD extension “.info”  may be ignored.

 

In the circumstances this Panel finds that the disputed domain name is confusingly similar to the VICTORIA’S SECRET trademark in which Complainant has rights and Complainant has therefore succeeded in satisfying the first element of the test in Policy   ¶ 4(a). 

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and so the burden shifts to Respondent to show he has such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

This Panel accepts that on the evidence Respondent is not commonly known by the disputed domain name; that the WHOIS information for the disputed domain does not associate Respondent with the disputed domain name; and that Complainant has not authorized Respondent to use the VICTORIA’S SECRET trademark in a domain name or otherwise.

 

On the evidence before this Panel, Respondent initially arranged for the disputed domain name to resolve to a website which displayed Complainant’s website in a frame. Respondent’s website was therefore visually identical to Complainant’s except for a different URL and website title.  Subsequently Respondent changed the content of his website to feature a variety of third-party links and pop-up advertisements. In the view of this Panel, Respondent has not acquired any rights or legitimate interest in the domain name by such use, and such use of Respondent’s disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or 4(c)(iii).

 

The Response does not address any of these issues and provides no evidence of any rights or legitimate interest of Respondent in the disputed domain name

 

For the above reasons this Panel finds that Respondent has no rights and legitimate interests in the disputed domain name and Complainant has also succeeded in satisfying the second element of the test in Policy ¶ 4(a). 

 

Registration and Use in Bad Faith

On the evidence, Respondent was actually aware of Complainant’s goodwill and reputation in the VICTORIA’S SECRET trademark when he registered the domain name. VICTORIA’S SECRET is a distinctive mark. On the balance of probabilities Respondent was also aware of Complainant’s prior ownership of the <victoriassecret.com> domain name and the website established by Complainant at that address to market its products.

 

Given the similarity of the domain name and Complainant’s marks and given Complainant’s reputation and established goodwill, it is most probable that Respondent chose the disputed domain name because it referred to Complainant and its products. This conclusion is supported by the fact that Respondent subsequently used the domain name in a manner that was calculated to confuse Internet users into the belief that the domain name was controlled by Complainant and resolved to Complainant’s website.

 

Respondent has taken predatory advantage of Complainants goodwill and reputation in the VICTORIA’S SECRET trademark by establishing a website that contained a virtually exact replica of the official Victoria’s Secret web site. It would appear that Respondent imported Complainant’s website into a frame or frames thereby giving the impression that Respondent’s website was in fact Complainant’s website. This must have been calculated to confuse Internet users into believing that Respondent’s website was in fact Complainant’s website.

 

While the fact that Respondent posted the words “Victoria Secret Gift Card Giveaway” on his site gives rise to concerns, there is no evidence that Respondent planned to capitalize on this confusion by using the disputed domain name as the address for a phishing site as alleged.

 

Subsequently Respondent replaced the site content with less sinister but, in the circumstances, nevertheless objectionable content offering links to various businesses, some of which compete with products marketed by Complainant and containing pop-up advertisements.  The use of pop up advertisements in these circumstances is particularly objectionable as there is a risk that confused Internet users may believe that Complainant has caused this intrusion.

 

In the circumstances this Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. See Policy, ¶ 4(b)(iv); see also U.S. Office of Personnel Mgmt. v. MS Technology Inc., FA198898 (Nat. Arb. Forum Dec.  9, 2003) (finding bad faith where respondent, inter alia, framed complainant’s site without complainant’s authorization

 

Finally, for completeness, Complainant’s allegation that Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C.  § 43(d), et seq. is outside the jurisdiction of this Panel.

 

This Panel finds that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in satisfying the third and final element of the test in Policy ¶ 4(a) and is entitled to succeed in this Complaint.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoriasecretonline.info> domain name be TRANSFERRED from Respondent to Complainant.

 

James Bridgeman, Panelist
Dated: April 19, 2010

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum