Victoria's Secret Stores Brand Management, Inc. v.
Eric Williams
Claim Number: FA1003001310591
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington DC, USA. Respondent is Eric Williams (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriassecretzone.info>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on March 1, 2010.
On March 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretzone.info> domain name is registered with GoDaddy.com, Inc. and that 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 March 4, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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 to postmaster@victoriassecretzone.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <victoriassecretzone.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecretzone.info> domain name.
3. Respondent registered and used the <victoriassecretzone.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant operates over 1,000 stores selling products bearing the VICTORIA’S SECRET mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,908,042 issued August 1, 1995).
Respondent, Eric Williams, registered the <victoriassecretzone.info> domain name on March 21, 2009. The disputed domain name does not currently resolve to an active website. Previously, as late as August 16, 2009, the disputed domain name resolved to a website that offered links to various third-party websites that compete with Complainant’s business.
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 VICTORIA’S SECRET mark through its registration of this mark with the USPTO mark under Policy ¶ 4(a)(i). See 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).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s disputed <victoriassecretzone.info>
domain name is confusingly similar to its VICTORIA’S SECRET mark. Respondent incorporates Complainant’s mark in
its entirety into the disputed domain name.
Respondent also deletes an apostrophe and the spaces between the words
in Complainant’s mark. Respondent adds
the generic word “zone.” Finally,
Respondent adds the generic top-level domain (“gTLD”) “.info” to Complainant’s
mark in the disputed domain name. The
Panel finds that these alterations do not distinguish Respondent’s disputed
domain name from Complainant’s mark.
Therefore, the Panel finds Respondent’s disputed <victoriassecretzone.info> domain
name is confusingly similar to its VICTORIA’S SECRET mark under Policy ¶
4(a)(i). See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat.
Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not
significant in determining the similarity of a domain name and a mark because
punctuation and spaces are not reproducible in a domain name.”); see also LOreal 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 the domain name from the mark); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Microsoft Corp.
v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is
identical to Complainant’s WINDOWS mark as the addition of a gTLD is a
necessary addition in the creation of any domain name and therefore an
indistinguishing characteristic under Policy ¶ 4(a)(i).“)
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must make a prima facie case showing Respondent lacks rights or legitimate interests in the <victoriassecretzone.info> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See 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.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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.”). Although Respondent failed to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information lists the registrant as “Eric Williams.” Thus, Respondent is not commonly known by the disputed domain name. Complainant asserts Respondent is not legitimately affiliated with Complainant in any way nor is Respondent licensed or permitted to use the VICTORIA’S SECRET mark. With no evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Furthermore, Respondent’s disputed domain name previously
resolved to a website that listed links to other websites and links to
Complainant’s competitors. Respondent
likely received click-through fees from each Internet user redirected to these
third-party websites. The Panel finds
Respondent’s use of the disputed domain name did not constitute a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶
4(c)(iii). See Computer Doctor Franchise
Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000)
(finding that the respondent’s website, which is blank but for links to other
websites, is not a legitimate use of the domain names); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991
(Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly
similar domain name to operate a portal with hyperlinks to various third-party
websites, some of which may be in direct competition with a complainant, does
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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that
the respondent’s use of the <expediate.com> domain name to redirect
Internet users to a website featuring links to travel services that competed
with the complainant was not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)).
Finally, Respondent’s disputed domain name does not currently resolve to an active website. The Panel finds Respondent’s lack of use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds Respondent’s prior use of the disputed <victoriassecretzone.info> domain name to redirect Internet users to another website that lists third-party websites that directly compete with Complainant’s business disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See 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)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
The Panel finds Respondent use of confusingly similar domain names to attract Internet users seeking Complainant’s services and then diverting them to third-party competing websites is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Respondent presumably profited from this use through the receipt of click-through fees, which the Panel finds constitutes bad faith registration and use under Policy ¶ 4(b)(iv). 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 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).
Respondent’s disputed domain name currently does not resolve to an active website. The Panel finds Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretzone.info> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 14, 2010
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