Claim Number: FA1003001312817
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 <victoriassecretbrazil.com>, registered with Godaddy.com, Inc.
The undersigned 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2010.
On March 11, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretbrazil.com> 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 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@victoriassecretbrazil.com. Also on March 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of a Written Notice, as defined in Rule 1. 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
<victoriassecretbrazil.com>
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <victoriassecretbrazil.com> domain name.
3. Respondent registered and used the <victoriassecretbrazil.com> 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
Respondent, Andre Marques,
registered the <victoriassecretbrazil.com> domain name on
January 27, 2009. The disputed domain
name resolves to a website purporting to sell Complainant’s products. The website prominently displays Complainant’s
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.
Complainant asserts rights in the
Complainant argues Respondent’s disputed <victoriassecretbrazil.com> domain
name is confusingly similar to its
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first show that Respondent has no rights or legitimate interests in the <victoriassecretbrazil.com> domain name under Policy ¶ 4(a)(ii). If the Panel finds Complainant’s allegations establish such a prima facie case, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). The Panel may presume Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to submit a response. However, the Panel will still examine the record in consideration of the factors listed in Policy ¶4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”). Although Respondent failed to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
In addition, Complainant asserts Respondent is not
affiliated with Complainant in any way nor is Respondent authorized to use the
Respondent’s disputed <victoriassecretbrazil.com>
domain name resolves to Respondent’s website, which, in addition to featuring
Complainant’s
The Panel finds that Respondent is attempting to pass itself
off as Complainant for profit. Respondent uses Complainant’s mark and logo on
Respondent’s website. Respondent also
offers similar goods that claim to be those made by Complainant. The Panel finds that Respondent’s efforts to
pass itself off as Complainant are further evidence that Respondent lacks
rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the respondent attempts to pass itself off as
the complainant online, which is blatant unauthorized use of the complainant’s
mark and is evidence that the respondent has no rights or legitimate interests
in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues Respondent uses the <victoriassecretbrazil.com> domain name to divert Internet users seeking Complainant’s products to Respondent’s website. The Panel finds Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to a website that offers goods that compete with Complainant’s products disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).
Complainant alleges that Respondent is using the disputed domain name to offer counterfeit versions of Complainant’s goods. The Panel finds that Respondent’s activities in selling counterfeit goods is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“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).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“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.”).
Finally, Complainant claims that Respondent is using the disputed domain names to
pass itself off as being associated with Complainant by displaying
Complainant’s
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 <victoriassecretbrazil.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 20, 2010
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