Victoria's Secret Stores Brand Management, Inc. v. Marco Peter Transit / Nabil Mossad
Claim Number: FA1104001383840
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 Marco Peter Transit / Nabil Mossad (“Respondent”), Palau.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com>, registered with GoDaddy.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2011; the National Arbitration Forum received payment on April 15, 2011.
On April 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 April 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2011 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@victoriasecretwear.biz, postmaster@victoriasecretwear.info, postmaster@victoriasecretwear.com, postmaster@victoriasecretwear.net, postmaster@victoriasecretwearonline.com, and postmaster@victoriasecretwearstore.com. Also on April 26, 2011, 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 May 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com> domain names.
3. Respondent registered and used the <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear. Complainant owns multiple 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;
Reg. No. 2,455,260 issued May 29, 2001; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, Marco Peter Transit / Nabil Mossad, registered the <victoriasecretwearstore.com>, <victoriasecretwearonline.com>, <victoriasecretwear.net>, <victoriasecretwear.com>, <victoriasecretwear.info> and <victoriasecretwear.biz> domain names on June 2, 2010. All the disputed domain names resolve to the “Victoria Secret Wear” commercial website at the <victoriasecretwear.com> domain name that offers women’s underwear for sale.
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 multiple trademark registrations for the VICTORIA’S SECRET mark with the USPTO, including Reg. No. 1,146,199, issued January 20, 1981.
The Panel finds that these USPTO trademark registrations supply sufficient evidence to prove Complainant’s rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i), despite that Respondent is in Palau and not the United States. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark because each of the disputed domain name makes the following inconsequential changes to Complainant’s mark: deletes the space between terms, omits the apostrophe in “victoria’s,” and deletes the final letter “s” in “victoria’s.” Additionally, the disputed domain names add a generic top-level domain (“gTLD”) (“.com,” “.net,” “.info,” or “.biz”) and one or more of the following generic or descriptive terms: “wear,” “store,” and/or “online.” The Panel determines that deleting the space between terms, removing an apostrophe, and adding a gTLD do not affect the disputed domain names for the purposes of Policy ¶ 4(a)(i). 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 U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that deleting a letter from Complainant’s mark in the disputed domain names does not prevent confusing similarity. See 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”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel also concludes that adding terms to Complainant’s mark does not remove the disputed domain names from the realm of confusing similarity. 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 Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)). The Panel accordingly holds that Respondent’s disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Before Complainant can shift the burden to prove rights and legitimate interests in the disputed domain names to Respondent, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent. Complainant has met this burden in the instant proceeding, but Respondent’s failure to respond did not satisfy its subsequent obligation under the Policy. As a result, the Panel infers that Respondent has not shown any rights and legitimate interests in the disputed domain names and that Complainant’s allegations may be regarded as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also 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 nevertheless consider the full record against the Policy ¶ 4(c) factors to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark in any manner. The WHOIS information for the disputed domain names lists the registrant as “Marco Peter Transit / Nabil Mossad,” which has no apparent connection to the disputed domain names. The Panel thus concludes that Respondent is not commonly known by the disputed domain names and consequently has no rights and legitimate interests according to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that the disputed domain names all resolve to the <victoriasecretwear.com> domain name which hosts a commercial website selling ladies underwear in competition with Complainant. Complainant argues that using Complainant’s mark to sell competing products for Respondent’s profit is not consistent with a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent uses the disputed domain names to sell women’s underwear, a product that Complainant also sells. Complainant asserts that Respondent is therefore using Complainant’s mark in disputed domain names that directly support Respondent’s competing business, which disrupts Complainant’s business efforts. The Panel finds that offering competing products for sale at disputed domain names that appropriate Complainant’s mark demonstrates bad faith registration and use according to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent’s disputed domain names intend to drive traffic to Respondent’s website by using Complainant’s well-known mark. Complainant alleges that Respondent aims to attract consumers by creating confusion as to an affiliation or association between Complainant and Respondent in order to profit from the commercial activity being hosted at the disputed domain names. The Panel finds that using Complainant’s mark to attract, mislead and profit from Internet users seeking Complainant represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
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 <victoriasecretwear.biz>, <victoriasecretwear.info>, <victoriasecretwear.com>, <victoriasecretwear.net>, <victoriasecretwearonline.com>, and <victoriasecretwearstore.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 25, 2011
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