Victoria's Secret Stores Brand Management, Inc. v. Loh Weng Kong
Claim Number: FA1203001435911
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 Loh Weng Kong (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretonlinestores.com>, registered with GoDaddy.com, Inc.
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 23, 2012; the National Arbitration Forum received payment on March 23, 2012.
On March 23, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretonlinestores.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 March 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@victoriassecretonlinestores.com. Also on March 23, 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 April 23, 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:
Complainant owns rights in the VICTORIA’S SECRET mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981). Complainant does business under the VICTORIA’S SECRET mark, operating retail stores and online stores that sell women’s lingerie, swimwear, and other apparel, beauty and personal care products and televising annual fashion shows internationally.
Respondent registered the <victoriassecretonlinestores.com> domain name on July 8, 2011. Respondent’s domain name previously resolved to a web page that sold Complainant’s products.
Respondent’s domain name currently resolves to a web page that does not appear to be an active website.
Respondent does not have permission to use the VICTORIA’S SECRET mark.
Respondent had actual and constructive knowledge of Complainant’s rights in the mark prior to registering the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, trademark rights in the VICTORIA’S SECRET mark at all times relevant to this proceeding. Complainant’s trademark is confusingly similar to Respondent’s disputed domain name.
Respondent has no authority to use Complainant’s trademark.
Respondent illegally traded off the popularity of Complainant’s VICTORIA’S SECRET mark and its owner’s goodwill to pass off its goods as Complainant’s.
The at-issue domain name is not currently used to host content.
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, 1981). The existence of the registrations supports a finding 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)).
Respondent’s disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The at-issue domain name simply removes the apostrophe and adds the term “onlinestores.” This striking of an impermissible character and 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, appends the generic top-level domain (“gTLD”) “.com.” See 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 taken cumulatively, these alternations to Complainant’s well know trademark are insufficient to differentiate it from the at-issue domain. Therefore, Complainant’s trademark and the at-issue domain name are 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). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
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 “Loh Weng Kong” which is not 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). Consistent with this holding the panel in Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001), found that the respondent was not likely to be commonly known by the disputed domain name considering the fame of the VICTORIA’S SECRET mark. This Panel likewise finds that based on the WHOIS information and the fame associated with Complainant’s mark, Respondent is not commonly known by the <victoriassecretonlinestores.com> domain name under Policy ¶ 4(c)(ii).
Complainant submits screen shots of Respondent’s disputed web page showing that Respondent’s previous use of the website was to sell Complainant’s goods and to redirect Internet users from Complainant’s site to its own in order to make a profit. Respondent’s use of the website to sell Complainant’s goods for commercial gain was neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”)
Complainant shows that the at-issue domain name links to a blank page with a generic login interface. The Panel notes that in some instance when seeking the domain name the “page not found” error may be redirected by the user’s DNS to a third party controlled webpage which is different than that reported by Complainant, but nevertheless not controlled or offered by Respondent. Complainant argues that this is not an active use of the domain name. The Panel agrees. The domain name’s inactivity demonstrates that Respondent is not using the domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (respondent did not possess rights or legitimate interests in the domain name when it failed to make active use of the domain name. Respondent does not associate any content with the disputed domain name, thereby evidencing a lack of rights and legitimate interests in respect of the domain name).
Therefore given the forgoing and without any controverting evidence on record, Complainant exceedingly satisfies its initial burden thereby conclusively demonstrating Respondent’s lack of rights and interests in the disputed domain name.
Respondent registered and used the at-issue domain name in bad faith.
Respondent’s previous use of the domain name entailed a web page that impermissibly sold what Respondent claimed to be Complainant’s goods. By diverting consumers to Respondent’s webpage, Complaint’s business was disrupted. Such disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001), (respondent registered the disputed domain names for the purpose of gaining customers and disrupting the complainant’s business of authorizing dealers to sell its equipment).
As discussed above, Respondent previously used its <victoriassecretonlinestores.com> domain name to drive Internet traffic to its website in order to profit by selling Complainant’s products. It follows that Respondent profited, or intended to profit, by confusing consumers as to the sponsorship of its website. These circumstances are evidence of Respondent’s bad faith registration and use under Policy ¶4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”).
Respondent’s current inactive use of the disputed domain name, evidence of Respondent’s lack of rights and interests in respect of the domain name, is also evidence of bad faith registration and use. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000), (Respondent made no use of the domain name and the Respondent could not have registered and used the domain name in a non-infringing manner; thus the respondent registered the domain name in bad faith).
Finally, Respondent had actual knowledge of Complainant’s rights in its Victoria’s secret mark. Respondent was aware of Complainant’s famous mark at the time it registered the at-issue domain name since Respondent sold goods there purporting to be Complainant’s products. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Respondent’s registration of the at-issue domain name evidences opportunistic bad faith. See Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting.’”)
For the forgoing reasons the Panel concludes that the <victoriassecretonlinestores.com> domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretonlinestores.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 26, 2012
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