Victoria's Secret Stores Brand Management, Inc. v. David Mandel
Claim Number: FA1009001348092
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 David Mandel ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretgiftcardonline.info>, registered with GoDaddy.com Inc. (R171-LRMS).
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2010; the National Arbitration Forum received payment on September 24, 2010.
On September 23, 2010, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the <victoriasecretgiftcardonline.info> domain name is registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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 September 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2010 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@victoriasecretgiftcardonline.info. Also on September 27, 2010, 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 October 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <victoriasecretgiftcardonline.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretgiftcardonline.info> domain name.
3. Respondent registered and used the <victoriasecretgiftcardonline.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., is a retailer of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards. Complainant sells its merchandise in retail stores across the country, as well as via its print mail order catalogue and its e-commerce website. Complainant owns many trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, David Mandel, registered the <victoriasecretgiftcardonline.info> domain name on May 27, 2010. The disputed domain name resolves to a website at the <giftcardrewardzone.com> domain name which purports to offer visitors a $500 Victoria’s Secret gift card in exchange for providing personal information and completing a series of offers from businesses unrelated to 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 owns many trademark registrations for the VICTORIA’S SECRET mark with the USPTO:
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
The Panel finds that USPTO trademark registrations are sufficient to prove Complainant’s rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that Respondent’s <victoriasecretgiftcardonline.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name incorporates Complainant’s mark, modifying it only by deleting the letter “s,” the space between the terms, and the apostrophe. In addition, the disputed domain name adds the descriptive terms “gift,” “card,” and “online,” which are descriptive of a product Complainant offers, and the generic top-level domain (“gTLD”) “.info.” The Panel finds that changing Complainant’s mark by deleting a single letter is insufficient to prevent confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The deletions of the apostrophe and the space between terms are also insignificant modifications for the purposes of a Policy ¶ 4(a)(i) analysis. 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 the domain name from the 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.”). The Panel also finds that adding descriptive terms to Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Finally, the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <victoriasecretgiftcardonline.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
When alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant first present a prima facie case against Respondent. The Panel finds that Complainant has established such a case in these proceedings, and therefore, the burden shifts to Respondent to show its rights or legitimate interests in the disputed domain name. As Respondent has failed to respond, however, the Panel infers that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations may be taken as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). In the interest of fairness, however, the Panel elects to consider the evidence in light of the Policy ¶ 4(c) factors to assess whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not affiliated with Complainant in any way and has not been licensed or authorized to use Complainant’s mark in the <victoriasecretgiftcardonline.info> domain name. The WHOIS information for the disputed domain name lists the registrant as “David Mandel,” a name which does not appear associated with the <victoriasecretgiftcardonline.info> domain name. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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 that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent uses the <victoriasecretgiftcardonline.info> domain name to divert Internet users to the <giftcardrewardzone.com> domain name, which offers a $500 Victoria’s Secret gift card in exchange for providing personal information and completing a series of offers from third-party businesses unrelated to Complainant. The Panel finds that using the disputed domain name to divert Complainant’s intending customers to a commercial website unaffiliated with Complainant does not comport with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent specifically registered the <victoriasecretgiftcardonline.info> domain name including Complainant’s mark in order to take advantage of the fame and goodwill associated with Complainant’s mark. Complainant asserts that Respondent aimed to attract Complainant’s customers to Respondent’s website by creating a likelihood of confusion as to the affiliation of Respondent’s disputed domain name and resolving website. Complainant argues that Respondent’s resolving website is a commercial website that likely generates revenue for Respondent, revenue that likely increases as Internet traffic to Respondent’s resolving website increases. Thus, the Panel finds that Respondent’s registration and use of the <victoriasecretgiftcardonline.info> domain name to attract, mislead and profit from Complainant’s customers is in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds 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 <victoriasecretgiftcardonline.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 29, 2010
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