Victoria's Secret Stores
Brand Management, Inc. v. Alexandre Almeida
Claim Number: FA1001001304637
PARTIES
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington D.C., USA. Respondent is Alexandre Almeida (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The disputed domain names are <victoriassecretfa.com>, <victoriassecretbrasil.com>,
<vendovictoriassecret.com>,
and <vendovictorias.com>,
all of which are registered with Fastdomain Inc. They are hereafter referred
to collectively as “the disputed domain names”.
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on January 25, 2010;
the Forum received a hard copy of the Complaint on January 26, 2010.
On January 25, 2010, Fastdomain Inc. confirmed by e-mail to the
Forum that all of the disputed domain names <victoriassecretfa.com>, <victoriassecretbrasil.com>,
<vendovictoriassecret.com>,
and <vendovictorias.com>
were registered with it and that the Respondent is the current registrant of
them. Fastdomain
Inc. also verified that Respondent is bound by its 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 February 4, 2010, a
Notification of Complaint and Commencement of Administrative Proceeding,
setting a deadline of February 24, 2010 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 by e-mail to postmaster@victoriassecretfa.com, postmaster@victoriassecretbrasil.com, postmaster@vendovictoriassecret.com, and postmaster@vendovictorias.com.
A timely Response was received and determined to be complete on February
24, 2010.
On March 4, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed
Mr. David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an indirect wholly owned subsidiary of Limited Brands,
Inc. and it claims that the name
In 2008 more than $5.6 billion of merchandise
was sold in connection with or bearing the
Complainant is the proprietor of the following trademarks all duly
registered at the United States Patent & Trademark Office (“USPTO”) –
GLAMOUR BY
MOOD BY
NO ONE FITS A WOMAN LIKE
ANGELS BY
Complainant is also the owner of the following trademark applications
all all of which contain the word
Complainant contends that the disputed domain names <victoriassecretfa.com>, <victoriassecretbrasil.com>,
and <vendovictoriassecret.com>
are confusingly similar to the above listed VICTORIA’S SECRET and VICTORIA trademarks, because they all incorporate the
mark VICTORIA’S SECRET (without its apostrophe or space which in any case
cannot be contained in a domain name) merely adding the Portuguese words ‘fa’
(which means ‘fan’), or ‘Brasil’ (which is the Portuguese spelling of
‘Brazil’), or ‘vendo’ (which means ‘sales’). Complainant contends that the
likelihood of confusion is heightened by the addition of these Portuguese words
as consumers might believe that the disputed domain names could lead them to
conclude that they are its own official site but directed in particular to
Portuguese speakers and/or residents of
Complainant further contends that the domain name <vendovictorias.com> incorporates the word VICTORIA which is
a significant portion of its VICTORIA’S SECRET and VICTORIA trademarks as well
as being confusingly similar to its domain names <victoria.com> and <bodybyvictoria.com>.
In support of its contention that Respondent has no rights or
legitimate interest in any of the disputed domain names, Complainant contends
as follows –
·
that all
of the disputed domain names resolve to a website at one of the disputed domain
names, namely <victoriassecretfa.com>,
which offers for sale what are purported to be its own VICTORIA’S SECRET
products which, Complainant maintains, could be either or counterfeits;
·
that
Respondent is neither affiliated with itself, nor has it been licensed to use
its trademarks, nor is it an authorized dealer or reseller;
·
that
Respondent is using the disputed domain names to confuse customers and to
divert them from its own legitimate website for commercial gain., and that this
is not a bona fide offering of goods or services;
·
that
Respondent is not commonly known by any of the disputed domain names either as
a business, individual, or other organization, and that there is nothing in Respondent’s
WHOIS information to imply that Respondent is commonly known by any of the
disputed domain names;
·
that Respondent’s
website is called “
·
that the
disputed domain names were registered by Respondent thirty years after
Complainant fist began using its VICTORIA’S SECRET trademark, more than ten
years after it registered the domain name <victoriassecret.com>, and long
after the name VICTORIA’S SECRET had become famous;
·
that Respondent
is not making a legitimate non-commercial or fair use of any of the disputed
domain names.
In support of its contention that the disputed domain names were
registered in bad faith, Complainant contends as follows –
·
That
Respondent is using its trademarks in the disputed domain names in order to
drive traffic from its own website to Respondent’s website, on which apparently
Complainant’s own goods are advertised but which in fact is unconnected with
Complainant;
·
that Respondent
registered the disputed domain names with the intention of attracting internet
users to its site for commercial gain by creating a likelihood of confusion
with Complainant’s trade marks as to the source, sponsorship, affiliation, or
endorsement of Respondent’s domain names and site. Thereby misleadingly
diverting internet traffic from Complainant’s website to Respondent’s for
commercial gain, all in violation of paragraph 4(b)(iv) of the Policy;
·
that
there is nothing on Respondent’s website to indicate that it is not an
authorized site run by or affiliated with Complainant and Respondent has made
no effort to disclaim any relationship with Complainant or to advise visitors
that Respondent is not authorized to sell genuine VICTORIA’S SECRET products;
·
that
visitors may not only provide Respondent with their personal and credit card information believing that the site is
affiliated with Complainant, but they may also believe that they will receive
genuine VICTORIA’S SECRET products ordered from the site – if indeed they are
genuine products and not counterfeit;
·
that it is clear
from Respondent’s website that Respondent was aware of Complainant’s famous
trademark
B. Respondent
Respondent’s Response came in the form of the following e-mail to the
Forum –
“There are some misunderstood on
1- The Domain vendovictorias.com
came from
http://www.sumauma.net/amazonian/legends/legends-regia.html
Attach #1
Translating the domain from
Portuguese to English will be SELL
2- The Domain
victoriassecretfa.com came from the same legend and FA is typed as FÁ that is
the nickname of my wife and not FÃ that means fan in English.
Based on these two arguments
does not make sense to me in transfer the domains to Victoria's Secret Stores,
what I would like to suggest is to keep these domains for 3 months (that is
when expire the domain names) and then I can transfer it to Victoria’s Secret
Stores. I´ll use this time to create a new domain and keep my traffic.”
FINDINGS
Complainant is a well-established
Respondent has provided no information about
itself, but from copies of its website which were attached to the Complaint, it would appear to be an online seller of beauty
products and accessories.
DISCUSSION
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.
PRELIMINARY ISSUE
Respondent has indicated in his short Response that he would be
prepared to transfer the disputed domain names to Complainant but only after a
period of three months. However he prefaces this offer by saying that a
transfer “does not make sense to me”.
Faced with these two conflicting statements, the Panel has decided to
follow the requirements of paragraph 15(a)
of the Rules and to decide this Complaint on the basis of the statements and
documents submitted by both parties, and as set out under “DISCUSSION” above.
The first point to make is that Respondent
has made no submissions under this heading.
Complainant has established, to the
satisfaction of the Panel, that it has substantial rights in the name and
trademark
Three of Respondent’s
domain names <victoriassecretfa.com>, <victoriassecretbrasil.com>, and <vendovictoriassecret.com> all contain the
It was held in
LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (NAF December 8, 2003) that the
omission of an apostrophe did not significantly distinguish the domain name
from the mark; while in American International
Group, Inc. v. Domain Administration Ltd. c/o William Vaughan FA 1106369
(NAF December 31, 2007) it was said that “spaces
are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’
‘.biz,’ or ‘.org,’ is required in domain names.
Therefore, the panel finds that the disputed domain name
[<americangenerallifeinsurance.com>]
is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.” In Daedong-USA, Inc Kioti
Tractor Division. v. O’Bryan
Implement Sales, FA 210302 (NAF December 29, 2003) it was said that “Respondent's domain name,
<kioti.com>, is identical to Complainant's KIOTI mark because adding a
top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”
However in this case, the above three
disputed domain names are not identical to Complainant’s trademarks, they all
contain additional matter.
It is well established that if a domain name
is merely a combination of a common word and a Complainant’s trademark, this is
sufficient for a finding of confusing similarity. See, for example, V Secret
Catalogue, Inc. v. Wig Distributions FA301727 (NAF September 7, 2004) in which
the Panel found that the domain name <victoriassecrethair.com> was
confusingly similar to the trademark VICTORIA’S SECRET; see also Allianz of America Corporation v. Lane Bond
FA 680624 (NAF June 2, 2006) in which it was found that the addition of the
generic term ‘finance’ which described the Complainant’s business did not
sufficiently distinguish the Respondent’s domain name from the Complainant’s
trademark; and in The Gillette Co. v. RFK
Associates FA 492867 (NAF July 28, 2005) it was found that the domain name
<duracellbatteries.com> was confusingly similar to the Complainant’s
trademark DURACELL.
Consequently, on the basis of the above
precedents, the Panel has no difficulty in finding that paragraph 4(a) (i) is
proved in relation to Respondent’s domain names <victoriassecretfa.com>, <victoriassecretbrasil.com>,
and <vendovictoriassecret.com>
as they consist of Complainant’s well-known trademark with the addition of
either or a country name or common dictionary words.
However the case against
Respondent’s fourth domain name <vendovictorias.com>
is less clearcut. The Panel finds that this name is not confusingly similar to
the trademark
The domain names can be
disregarded, as the Policy requires only that a disputed domain name should be
similar to a “trademark or service mark”, the trademark BODY BY VICTORIA is not
similar to <vendovictorias.com>,
and the application for the trademark
Consequently, the Panel
finds that paragraph 4(a) (i) is not proved in relation to Respondent’s domain name <vendovictorias.com>.
It is well established that a
Complainant must first make a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain names and if it does so,
the burden shifts to Respondent to show it does have rights or legitimate
interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18,
2006) and AOL LLC v. Jordan Gerberg, FA 780200 (NAF September 25,
2006).
It is clear to the Panel that in this case Complainant has
indeed made out a prima facie case.
In
his very brief response, Respondent states, in connection with all of the disputed domain
names, that they are actually derived from “Vitória Régia” which is the name of the largest water lily in the world
and a native of the
With
regard to the domain name <victoriassecretfa.com>,
Respondent states that it should be written as ‘fá’ which is his wife’s nickname, and not ‘fã’ which is Portuguese for ‘fan’.
However Respondent produces no evidence to back up this claim,
and in any case this particular domain name contains no accent, as indeed it
cannot, in common with all domain names.
As
Respondent is an individual, clearly not well versed in either English or the intricacies
of the Policy or Rules, the Panel has attempted to look as favourably as possible on
his arguments, but they are completely wide of the mark and unfortunately fail
to address the issue. The Panel therefore finds that Respondent has no
legitimate rights or interest in any of the disputed domain names and that
paragraph 4(a)(ii) is proved in respect of all of the disputed domain names.
The Panel finds that Respondent is in breach
of at least two of the sub-sections of paragraph 4(b) of the Policy.
For example, he is using all of the disputed domain
names to operate a website purporting to sell Complainant’s authentic products.
Complainant suggests that these may actually not be genuine but counterfeit,
but there is no proof of this. In either case they have not been authorized by
Complainant. The Panel believes that this use constitutes a disruption of
Complainant’s business and so qualifies as bad faith registration and use
pursuant to paragraph 4(b)(iii) of the Policy. For
example, in Southern Exposure v. Southern
Exposure, Inc., FA 94864 (NAF July 18, 2000) the Panel found that the
respondent acted in bad faith by attracting Internet users to a website that
competed with the complainant’s business); while in Paul Barnet Puckett d/b/a nature’s Window v. Christopher D. Miller,
D2000-0297 (WIPO June 12, 2000) the Panel found that as the respondent had
diverted business from the complainant to a competitor’s website this was in
violation of paragraph 4(b)(iii) of the Policy; and in EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) the
Panel found that the respondent registered and used the domain name <eebay.com>
in bad faith where he had used the domain name to promote competing auction
sites.
In addition, the Panel finds that Respondent
is using all of the disputed domain names to intentionally attract Internet users to its website
and that he is attempting to profit from the resolving websites by creating a
strong possiblity of confusion with Complainant’s trademark VICTORIA’S SECRET by
offering products which could be its authentic products. In either case this is
in violation of paragraph 4(b)(iv) of the Policy. For example, in Hewlett-Packard Company and Hewlett-Packard Development
Company v. Mazhar Ali, FA 353151 (NAF December
13, 2004) it was held that “Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv)”; while in Utensilerie Associate
S.p.A. v. C & M, D2003-0159 (WIPO
April 22, 2003) it was said that “The
contents of the website, offering Usag products, together with the domain name
may create the (incorrect) impression that Respondent is either the exclusive
distributor or a subsidiary of Complainant, or at the very least that
Complainant has approved its use of the domain name.”
The Panel therefore concludes that paragraph
4(a)(iii) has been proved in respect of all of the
disputed domain names.
DECISION
All three elements required under the ICANN Policy have been
established in respect of three of the disputed domain names namely <victoriassecretfa.com>, <victoriassecretbrasil.com>,
<vendovictoriassecret.com>,
and so the Panel concludes that relief shall be GRANTED for them. However paragraph 4(a)(i) has not been established in respect of <vendovictorias.com> so relief is DENIED
for it.
Accordingly, it is Ordered that the domain
names <victoriassecretfa.com>, <victoriassecretbrasil.com>,
and <vendovictoriassecret.com>,
be TRANSFERRED from Respondent to Complainant, but not <vendovictorias.com>.
David H Tatham, Panelist
Dated: March 18, 2010
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