national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Nati Pula

Claim Number: FA1003001315262

 

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 Nati Pula (“Respondent”), Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <victorias-secret-fashion-show.info>, registered with GoDaddy.com.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2010. 

 

On March 25, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <victorias-secret-fashion-show.info> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@victorias-secret-fashion-show.info.  Also on March 29, 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 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <victorias-secret-fashion-show.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 <victorias-secret-fashion-show.info> domain name.

 

3.      Respondent registered and used the <victorias-secret-fashion-show.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Victoria’s Secret Stores Brand Management, Inc., is an international marketer, producer and distributor of women’s lingerie, personal care products and clothing with annual sales of over $5.6 billion.  Complainant operates its official <victoriassecret.com> domain name in conjunction with its official <vsallaccess.com> domain name that showcases the “Victoria’s Secret Fashion Show.”  Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g. Reg. No. 1,146,199 issued on Jan. 20, 1981). 

 

Respondent, Nati Pula, registered the <victorias-secret-fashion-show.info> domain name on December 5, 2007.  Respondent’s disputed domain name previously resolved to a website that mimicked Complainant’s official <vsallaccess.com> domain name that displayed photos and information from Complainant’s “Victoria’s Secret Fashion Show.”  Respondent’s disputed domain was changed after the filing of the original complaint in this matter to display a “closed” sign and read, “This website was closed.”

 

DISCUSSION

 

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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g. Reg. No. 1,146,199 issued on Jan. 20, 1981).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <victorias-secret-fashion-show.info> domain name contains Complainant’s entire VICTORIA’S SECRET mark, absent the apostrophe, replaces the space between the words “victorias” and “secret” with a hyphen, and includes a hyphen along with the descriptive terms “fashion show.”  Complainant argues that these changes and additions to its mark are not sufficient to remove the disputed domain name from being confusingly similar to its mark.  Further, Complainant argues that its famous “Victoria’s Secret Fashion Show” that airs on national television as well as the Internet supports a finding that the disputed domain name is confusingly similar to Complainant’s mark.  The Panel finds that a disputed domain name that contains the entire mark of Complainant while removing the apostrophe from Complainant’s mark, adding hyphens, and the descriptive term “fashion-show” as well as the generic top-level domain (“gTLD”) “.info” is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); 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);  Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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 that Policy ¶ 4(a)(i) has been satisfied.          

 

Rights or Legitimate Interests

 

Complainant submits that Respondent does not have rights or legitimate interests in the <victorias-secret-fashion-show.info> domain name.  Complainant must develop a prima facie case to show that Respondent does not have rights or legitimate interests in the disputed domain name.  Upon producing a prima facie case the burden of proof shifts to Respondent to submit evidence that it does hold rights and legitimate interests in the disputed domain name.  The Panel finds Complainant has adequately established a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name.  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute 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 right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also American Express Co. v. Fan 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.”). 

 

Complainant contends that Respondent is not affiliated with Complainant, nor has Complainant licensed or authorized Respondent to use its VICTORIA’S SECRET mark.  Further, Complainant argues that Respondent is not commonly known by the <victorias-secret-fashion-show.info> domain name.  The WHOIS information identifies “Nati Pula” as the registrant of the disputed domain name, and Respondent offers no evidence to show that it is commonly known by the disputed domain name.  Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <victorias-secret-fashion-show.info> domain name under Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).

 

Respondent’s disputed domain name previously resolved to a website that copied Complainant’s official <vsallaccess.com> website.  Complainant has submitted evidence to show that Respondent displayed photographic images, model information, and videos that were a nearly exact replica of Complainant’s official website.  Respondent’s previous use of the disputed domain name also included “ads by Google” advertisements for businesses unrelated to Complainant.  The Panel finds that this type of use is not made in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See American 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). 

 

Further, Complainant argues that after the original complaint was filed in this action on March 24, 2010 that Respondent changed the content of the disputed domain name to display a “closed” sign that read, “This website was closed.”  Complainant argues that such use of the disputed domain name is neither in connection with a bona fide offering of goods or services nor in connection with a legitimate noncommercial or fair use.  The Panel finds that Respondent lacks rights and legitimate interests in the <victorias-secret-fashion-show.info> domain name because its use is not currently in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or 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 T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (concluding that the respondent had no rights or legitimate interests in the <worldgyms.com> domain name because it contained no substantive content, just the phrase “coming soon” and a picture of someone working out). 

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.       

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the <victorias-secret-fashion-show.info> domain name was made in bad faith.  Complainant argues that Respondent is using the confusingly similar domain name to attract Internet users to its website for financial gain by displaying third-party links that are unrelated to Complainant.  The Panel finds that Respondent’s registration and use of the <victorias-secret-fashion-show.info> domain name was made in bad faith under Policy ¶ 4(b)(iv) because there is a likelihood of confusion associated with the dispute domain name, and because Respondent may be profiting commercially from that confusion.  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).

 

The Panel further finds that Respondent’s current failure to make an active use the disputed domain is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also 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).    

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victorias-secret-fashion-show.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson , Panelist

Dated:  April 28, 2010

 

 

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