Claim Number: FA0911001295450
Complainant is Victoria's Secret Stores Brand
Management, Inc. (“Complainant”),
represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lojasvictoriassecret.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.
Hon. Nelson A Diaz as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 20, 2009.
On November 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lojasvictoriassecret.com> domain name is registered with Godaddy.com, Inc. and that the 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-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 21, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on December 17, 2009.
On December 22, 2009 Complainants Additional Submission was received and On December 23, 2009 Respondent Additional Submission was received complying with Supplemental Rule 7.
On December 28, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
As a result of
this widespread, long-time, continuous, and prominent use of the
This site was set up as a blog to
C. Additional Submissions
Respondent has attempted to disguise her bad faith registration and use of the domain name in this proceeding with a false ex post facto justification of noncommercial use. Visitors who enter the Domain Name into their web browsers are taken to a web site at the domain name <lojavictoriassecret.com> (the “Site”). Respondent’s Additional Submissions admits this site is to provide information and news to friends and acquaintances
Respondent has violated Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) through its numerous
registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January
20, 1981). See Miller Brewing
asserts that the <lojasvictoriassecret.com> domain name is confusingly
similar to Complainant’s
Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Respondent is not commonly known by the <lojasvictoriassecret.com> domain name. The WHOIS information for the disputed domain name lists “Monique Anunciacao” as the registrant. The Panel finds that Respondent is not commonly known by the <lojasvictoriassecret.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that the <lojasvictoriassecret.com> domain name resolves to a website that features
Complainant’s promotional photograph and Complainant’s
Complainant asserts that Respondent’s use of the <lojasvictoriassecret.com> domain name creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain name. Complainant further asserts that Respondent is commercially gaining from this likelihood of confusion. The Panel agrees and finds that Respondent’s actions constitute bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lojasvictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: January 11, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum