Victoria Secret Stores Brand Management, Inc. v. Chen Fang Fang
Claim Number: FA0904001257933
Complainant is Victoria 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 <victoriasecretshoes.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 16, 2009.
On April 20, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <victoriasecretshoes.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 April 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 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@victoriasecretshoes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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." 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. Respondent’s
<victoriasecretshoes.com>
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <victoriasecretshoes.com> domain name.
3. Respondent registered and used the <victoriasecretshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent registered the <victoriasecretshoes.com>
domain name on November 18, 2007.
Respondent is using the domain name to resolve to a website offering
sponsored click-through links that further resolve to third-party websites
offering products in competition with Complainant’s goods. Respondent has no affiliation with
Complainant or its
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.
The Panel finds that Complainant has established rights in
the
Respondent’s domain
name incorporates Complainant’s
Additionally,
Complainant alleges that the descriptive term “shoes” actually heightens the
confusion between the two, because Complainant sells an extensive collection of
shoes under its
Complainant also alleges that the generic top-level domain
name “.com” fails to distinguish the disputed domain name from Complainant’s
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights or legitimate interests in the <victoriasecretshoes.com> domain name. Under Policy ¶ 4(a)(ii), a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name. Once a complainant has made their prima facie case in support of their allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests. In this case, Respondent has failed to respond to the Complaint. Based on Respondent’s failure to contest the allegations against it, the Panel may accept as true, all reasonable allegations made by Complainant. The Panel finds that Complainant has presented a prima facie case and the Panel now chooses to consider whether an evaluation of all the evidence shows rights and legitimate interests for Respondent under Policy ¶ 4(c), despite the inferences the Panel may draw based on Respondent’s failure to respond to the Complaint. 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 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); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The Panel finds no evidence in the record to suggest that
Respondent is commonly known by the disputed domain name. Complainant alleges that Respondent was not
authorized to use the
Complainant alleges
that Respondent is using the disputed domain name to display click-through
links and to redirect Internet users to sponsored websites in competition with
Complainant. Complainant asserts that such
use does not qualify as a bona fide offering of goods and services or a
legitimate noncommercial use under Policy ¶¶ 4(c)(i)
or (iii). The Panel finds that
Respondent’s use of the disputed domain name as a parked website containing
links to goods that are in competition with Complainant, while presumably
earning click-through fees, does not constitute a bona fide offering of
goods or services pursuant to Policy ¶¶ 4(c)(i) or (iii). See
Persohn v.
Lim, FA 874447 (Nat. Arb. Forum Feb.
19, 2007) (finding that the respondent was not using a disputed domain name in
connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use by redirecting
Internet users to a commercial search engine website with links to multiple
websites that may be of interest to the complainant’s customers and presumably
earning “click-through fees” in the process); see also Jerry Damson, Inc.
v.
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain name to operate a website displaying links to Complainant’s competitors’ websites and diverting Internet users to several other domain names. The Panel finds that Respondent’s use of a confusingly similar domain name to divert Internet users seeking information on Complainant’s goods to competing websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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 commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent’s use of the VICTORIA’S SECRET mark in the <victoriasecretshoes.com> domain name, which resolves to a website displaying links to third party commercial websites that offer products in competition with Complainant’s business, constitutes evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant alleges that Respondent is intentionally attempted to attract Internet users to the disputed domain name, by creating a likelihood of confusion with Complainant’s mark as to the affiliation and endorsement of the domain name. The Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv), by using a domain name that was confusingly similar to Complainant’s mark to offer links to websites that offered goods that were in direct competition with Complainant’s business and presumably profiting from this use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
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 <victoriasecretshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 1, 2009
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