Victoria's Secret Stores Brand Management, Inc. v. Alexandre Almeida
Claim Number: FA1001001304637
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”.
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.
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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org.
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.
Complainant requests that the domain names be transferred from Respondent to 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”) –
NO ONE FITS A WOMAN LIKE
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>,
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;
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
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
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.”
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.
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.
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
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 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.
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.
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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