national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. NOLDC, Inc.

Claim Number: FA0802001155619

 

PARTIES

Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, District of Columbia, USA.  Respondent is NOLDC, Inc. (“Respondent”), Louisiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretswimwear.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2008.

 

On February 29, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <victoriassecretswimwear.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 2008 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@victoriassecretswimwear.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 31, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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."  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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <victoriassecretswimwear.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <victoriassecretswimwear.com> domain name.

 

3.      Respondent registered and used the <victoriassecretswimwear.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., owns nearly 1,000 retail stores that offers a wide range of items for sale bearing the VICTORIA’S SECRET mark, including swimwear.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark (i.e. Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, NOLDC, Inc., registered the <victoriassecretswimwear.com> domain name on June 11, 2005.  Respondent’s disputed domain name resolves to a parked page that displays a list of hyperlinks advertising goods that compete with Complainant’s business.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges rights to the VICTORIA’S SECRET mark based upon its numerous USPTO trademark registrations.  Under the Policy, registration of a mark with an appropriate governmental authority, such as the USPTO, confers rights in that mark to the complainant.  Therefore, the Panel finds that Complainant has successfully established rights to the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).

 

Complainant also alleges that the <victoriassecretswimwear.com> domain name is confusingly similar to its VICTORIA’S SECRET mark.  The disputed domain name contains Complainant’s mark in its entirety, but removes the apostrophe and the space between the two terms.  The Panel finds these slight alterations irrelevant under the Policy since domain names do not allow for punctuation or spaces.  Furthermore, the disputed domain name adds the generic word “swimwear” that describes Complainant’s business.  The Panel finds that this word adds to the confusing similarity between the <victoriassecretswimwear.com> domain name and Complainant’s mark because Complainant sells swimwear under the VICTORIA’S SECRET mark.  Finally, the disputed domain name adds the generic top-level domain (“gTLD”) “.com.”  Again, this addition is irrelevant under the Policy since all domain names are required to have a top-level domain.  Therefore, the Panel concludes that Respondent’s <victoriassecretswimwear.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).  See 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.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <victoriassecretswimwear.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the <victoriassecretswimwear.com> domain name, either as a business, individual, or other organization.  The WHOIS information identifies Respondent as “NOLDC, Inc.” and the Panel can find no other evidence in the record indicating that Respondent might be commonly known by the disputed domain name.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <victoriassecretswimwear.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

Respondent is using the <victoriassecretswimwear.com> domain name to redirect Internet users to a parked page that advertises goods that compete with Complainant’s business.  The Panel presumes that Respondent earns click-through fees for each redirected Internet user.  The Panel determines that this use of the <victoriassecretswimwear.com> domain name is not in connection with 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).  See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also 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 website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

As mentioned above, Respondent’s <victoriassecretswimwear.com> domain name displays a parked page that advertises goods that compete with Complainant’s business.  This use of the disputed domain name is likely to disrupt Complainant’s business by diverting potential customers to the websites of Complainant’s competitors.  Therefore, the Panel finds that Respondent’s registration and use of the <victoriassecretswimwear.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Complainant alleges that Respondent’s use of the confusingly similar <victoriassecretswimwear.com> domain name also creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website the resolves from the disputed domain name.  Complainant further contends that Respondent receives click-through fees for each redirected Internet user, and is therefore attempting to commercially gain and profit off the goodwill associated with Complainant’s VICTORIA’S SECRET mark.  The Panel agrees, and therefore concludes that Respondent has registered and is using the <victoriassecretswimwear.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <victoriassecretswimwear.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 14, 2008

 

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