Claim Number: FA0805001191651
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise
R. Blakeslee, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretangel.com>, registered with Moniker Online Services, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2008.
On May 27, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretangel.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 June 3, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. This Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which 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 items.
2. Complainant uses the famous mark VICTORIA’S SECRET as the name of more than 1,000 Victoria’s Secret retail stores located throughout the United States and more than 300 Victoria’s Secret retail stores located in Canada which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET.
3. Additionally, Complainant uses the mark VICTORIA’S SECRET in conjunction with over 45 stand-alone “Victoria’s Secret Beauty” retail stores located throughout the United States and over 410 “Victoria’s Secret Beauty” retail locations located throughout the United States operating within or connected to Victoria’s Secret lingerie stores.
Complainant also uses the mark
In 2007, more than $5 billion of merchandise was sold
in connection with or bearing the mark
As a result of this widespread, long-time, continuous,
and prominent use of the mark VICTORIA’S SECRET, the mark VICTORIA’S SECRET has
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.,
FA 94342 (Nat. Arb. Forum, May 9, 2000) (recognizing
II. Grounds On Which The Complaint is Made
Respondent’s registered Domain Name, <victoriasecretangel.com>, is
confusingly similar to Complainant’s mark
The Domain Name <victoriasecretangel.com>
incorporates Complainant’s mark in its entirety and merely adds a word (i.e.
“Angel”), which is also associated with Complainant’s brand. The only difference between Respondent’s
Domain Name and Complainant’s
This likelihood of confusion is heightened by the fact
that Respondent is trading off of other of Complainant’s famous brands, as
Complainant owns a federal trademark registration for the mark ANGELS BY
VICTORIA’S SECRET, Registration No. 2,168,500.
Complainant sells many different styles of products under the “Angel’s
Additionally, Complainant owns three pending federal
trademark registrations for marks incorporating the word “angels,” namely,
VICTORIA’S SECRET ANGELS, VICTORIA’S SECRET SEXY ANGELS, and DREAM ANGELS BY
VICTORIA’S SECRET. The Domain Name <victoriasecretangel.com>
By registering a domain name that adds an element from
Complainant’s other brands to the famous mark
6. Because Complainant sells genuine merchandise under its famous VICTORIA’S SECRET mark at its e-commerce website located at <victoriassecret.com> and Complainant possesses trademark rights in several variations of the mark that include the word “angel,” Consumers seeking genuine VICTORIA’S SECRET brand products are likely to be deceived into believing that the Domain Name is, in fact, Complainant’s official e-commerce web site or a legitimately affiliated web site.
7. As a result, it is highly unlikely – if not impossible – that Respondent’s Domain Name will not cause confusion, mistake, and misleadingly divert Internet users trying to locate Complainant’s official site, or those looking for legitimate affiliated sites.
B. Respondent Has No Rights or Legitimate Interest in the Domain Name
1. Respondent is using the Domain Name for a web site that promotes commercial sites, some which offer goods that compete with Complainant’s goods. The Domain Name currently resolves to a web site that provides various sponsored click-through links to third party web sites, some of which offer competing products, e.g. “American Eagle: Shop for our new Paige Cotton Bra & get Free Shipping with your order!”
The web site located at the Domain Name is not owned,
affiliated with, or endorsed by Complainant.
Respondent is neither affiliated with, nor has it been licensed or
permitted to use, the
Complainant sent a cease and desist letter via e-mail
and certified mail to Respondent on August 10, 2006, informing it that the
registration and use of the Domain Name <victoriasecretangel.com>
infringed upon and was dilutive of Complainant’s mark and further constituted
unfair competition, false advertising, and passing off, as well as a violation
of the Anticybersquatting Consumer Protection Act. In this letter, Complainant further requested
that Respondent immediately cease using the Domain Name and assign all rights
in the Domain Name to Complainant.
Respondent is using the Domain Name to divert Internet
traffic from the legitimate
Further, on information and belief, Respondent is not
commonly known by the Domain Name, either as a business, individual, or other
organization. See Policy, 4(c)(ii).
Respondent’s true name is not ascertainable at this time because
Respondent is shielded by an anonymous domain registration service that allows
consumers to register domain names privately.
Nothing in Respondent’s WHOIS information, however, implies that
Respondent is “commonly known” by 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). Additionally, Respondent registered the
Domain Name almost twenty-five (25) years after Complainant had begun using its
6. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. On information and belief, the sole reason Respondent has chosen the <victoriasecretangel.com> domain name is to misleadingly divert Internet traffic from Complainant’s web site to Respondent’s for commercial gain. See Policy, 4(c)(iii).
1. Respondent is using the Domain Name to operate a website featuring links to third party commercial sites, some of which offer products in competition with Complainant’s products. Therefore, Respondent’s use constitutes bad faith registration and use pursuant to Policy 4(b)(iii) because it may be inferred that Respondent is collecting referral fees for each misdirected Internet user linked to a competitor’s website. Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Upon information and belief, Respondent registered the
Domain Name with the intent to attract Internet users to its web site for commercial
gain by creating a likelihood of confusion with Complainant’s mark as to the
source, sponsorship, affiliation, or endorsement of Respondent’s web site,
thereby misleadingly diverting Internet traffic from Complainant’s web site to
Respondent’s for commercial gain. See Policy, 4(b)(iv). Again, upon misleadingly diverting internet
traffic to its own web site, Respondent runs click-through links and redirect
users to sponsored web sites for a commercial gain and therefore, exploits and
trades off of the reputation and goodwill of Complainant’s famous
It is inconceivable that Respondent was not aware of
Complainant’s famous trademark
4. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d), et seq.
B. Respondent failed to submit a Response in this proceeding.
Complainant currently holds registrations of the
domain name was registered on April 15, 2005.
It currently resolves to a website providing various links to
third-parties, many of whom offer products in competition with those sold under
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 has sufficiently established its rights in the
domain name contains the
Based upon the foregoing, the Panel finds the <victoriasecretangel.com> domain name
is confusingly similar to Complainant’s
The Panel concludes Complainant has satisfied Policy ¶4(a)(i).
Under Policy ¶4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the <victoriasecretangel.com>
domain name. See VeriSign Inc. v. VeneSign
In an abundance of caution, the Panel will expressly consider the elements listed under Policy ¶4(c) even though Respondent has not responded to the Complaint.
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate Respondent is or ever was commonly known by the <victoriasecretangel.com> domain
name. Furthermore, Respondent has
neither sought nor received permission to use the
The <victoriasecretangel.com> domain name resolves to a links-driven page, featuring various links to third-parties, many of whom offer products in direct competition with those offered under Complainant’s VICTORIA’S SECRET mark. Presumably Respondent gets revenue from the “clicks” on these links. The Panel finds this activity does not constitute a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). 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 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); see also 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).
The Panel concludes Complainant has satisfied Policy ¶4(a)(ii).
Respondent’s <victoriasecretangel.com> domain name resolves to a web page displaying various links to third parties, many of whom offer products in direct competition with those offered under Complainant’s mark. Presumably Respondent gets revenue from the “clicks” on these links. Therefore, the Panel finds Respondent registered and is using the disputed domain name in bad faith for the purpose of disrupting Complainant’s business 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 Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy¶¶ 4(b)(iii) [and] (iv).”).
The Panel presumes that Respondent is commercially benefiting from the use of such links through the accrual of click-through fees. As a result, the Panel finds this to be additional evidence Respondent registered and is using the <victoriasecretangel.com> domain name in bad faith pursuant to Policy ¶4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)).
The Panel concludes Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretangel.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 9, 2008
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