national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Pluto Domain Services Private Limited

Claim Number: FA0903001251612

 

PARTIES

Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, Washington D.C., USA.  Respondent is Pluto Domain Services Private Limited (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretswimsuit.com>, registered with Lead Networks Domains Pvt. Ltd.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 11, 2009.

 

On March 20, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretswimsuit.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name.  Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 2009 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@victoriasecretswimsuit.com by e-mail.

 

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

 

On April 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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:

 

Complainant first used its VICTORIA’S SECRET trademark in commerce in the United States as early as June1977, in association with the retail sales of lingerie, clothing, including swimsuits, and beauty products, as well as fragrances, runway shows, and fashion collections. 

 

Complainant’s VICTORIA’S SECRET mark is registered with the UPSTO (including Reg. No. 1,146,199, issued Jan. 20, 1981). 

 

Complainant has been prominently using the <victoriassecret.com> domain name since 1998 in connection with its retail sales.

 

Respondent has no license or agreement with Complainant authorizing Respondent to use the VICTORIA’S SECRET mark.

 

Respondent registered the disputed <victoriasecretswimsuit.com> domain name on January 11, 2008. 

 

Respondent is using the disputed domain name to operate a website that provides sponsored click-through links, which direct Internet users to third party commercial websites offering goods competing with the business of Complainant. 

 

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

 

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

 

Respondent registered and uses the disputed <victoriasecretswimsuit.com> domain name in bad faith.

 

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

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) through registration of the mark with the UPSTO.  See Victoria’s Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”);  see also 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).

 

Complainant’s mark is distinctive.  Respondent’s domain name incorporates the dominant features of Complainant’s mark while merely deleting the letter “s” and the apostrophe from the word “VICTORIA’S” and adding the generic term “swimsuit” and the generic top-level domain name “.com.”  The generic word “swimsuit” heightens the likelihood of confusion as between the mark and the domain name because it is undisputed that Complainant sells swimsuits under its VICTORIA’S SECRET mark.  The minor alterations cited and the addition of a generic term to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the mark where the mark is distinctive);  see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity under the Policy where <kohlerbaths.com>, the disputed domain name, contained a complainant’s mark in its entirety, merely adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”) Further see L’Oreal 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 a domain name from a competing mark).   

 

Likewise the presence of the generic top-level domain name “.com” is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis because every domain name is required to have such a suffix.  See, for example, Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

The disputed domain name <victoriasecretswimsuit.com> is therefore confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights to or legitimate interest in the <victoriasecretswimsuit.com> domain name.  Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it nonetheless does have rights to or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

See also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).  

 

Complainant has presented a prima facie case. And, because Respondent has failed to respond to the Complaint, we may assume that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):

 

[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.

 

See also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate any rights to or legitimate interests in a contested domain name). 

 

Although we are entitled to proceed to conclude this aspect of our inquiry without further deliberation, we elect to examine the record before us to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name within the parameters set out in Policy ¶ 4(c).

 

We begin by noting that there is no evidence in the record suggesting that Respondent is commonly known by the <victoriasecretswimsuit.com> domain name.  Moreover, Complainant asserts, and Respondent does not deny, that Respondent has no license or agreement with Complainant authorizing Respondent to use the VICTORIA’S SECRET mark.  Finally in this connection, the pertinent WHOIS information identifies Respondent only as “Pluto Domain Services Private Limited.”  Thus, Respondent has failed to establish rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); 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, that assertion must be rejected). 

 

We next observe that Complainant alleges, and Respondent does not contest, that the <victoriasecretswimsuit.com> domain name is being used to resolve to a website that confronts Internet users with click-through links for third parties that offer goods in competition with the business of Complainant.  Such a use, for the evident purpose of trading upon the goodwill associated with Complainant’s VICTORIA’S SECRET mark, does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.  See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that a respondent’s use of domain names confusingly similar to a complainant’s WAL-MART mark to divert to websites competing with that complainant’s business Internet users seeking its goods and services did not constitute 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 also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a contested domain name was not 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)).

 

From all of this, we conclude that Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Respondent’s use of Complainant’s VICTORIA’S SECRET mark in the domain name <victoriasecretswimsuit.com> to direct Internet users to a website promoting other commercial websites that offer goods competing with Complainant’s business suggests that Respondent registered the disputed domain name intending to disrupt Complainant’s business by diverting consumers as alleged in the Complaint.  Therefore, we conclude that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by using the domain names to operate a commercial search engine with links to the products of a complainant and to that complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing links to the websites of a complainant’s competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)). 

 

Additionally, Respondent registered and is using the <victoriasecretswimsuit.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent’s undenied behavior, as alleged in the Complaint, and for presumed economic benefit, creates a likelihood of confusion as to the possibility of Complainant’s affiliation with or endorsement of the disputed domain name and resolving website.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting from this behavior); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by employing a domain name confusingly similar to a complainant’s mark to offer links to third-party sites that offered services similar to those offered by that complainant).

 

Complainant has thus satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <victoriasecretswimsuit.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  May 1, 2009

 

 

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