Claim Number: FA1004001318154
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
NAMES
The domain names at issue are <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2010.
On April 11, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 April 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@victoriassecretmalaysia.com, postmaster@victoriasecretworld.com, and postmaster@victoriasecretheaven.com. Also on April 14, 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 May 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names are
confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names.
3. Respondent registered and used the <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent, Rafidah Ramly, registered the <victoriassecretmalaysia.com> domain name on April 14, 2009, which does not resolve to an active website. Respondent registered the <victoriasecretworld.com> domain name on March 19, 2009, which does not resolve to an active website. Respondent registered the <victoriasecretheaven.com> domain name on May 13, 2009, which resolves to a site styled as a blog and sells Complainant’s products or counterfeit versions of Complainant’s products related to its mark.
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 its rights
in the
Complainant argues that
Respondent’s <victoriassecretmalaysia.com> domain
name is confusingly similar to its mark. Complainant contends that the disputed
domain name merely removes punctuation from its mark (apostrophe and space
between words), adds a geographic term (“
Complainant argues that
Respondent’s
<victoriasecretworld.com> and <victoriasecretheaven.com>
domain names are confusingly similar to its mark. Complainant notes that
these disputed domain names contain its VICTORIA’S SECRET mark in its entirety,
merely removing punctuation from its mark (apostrophe and space between words),
removing an “s”, adding a generic term to each disputed domain name (“world”
and “heaven”), and adding a gTLD to each. The Panel finds that these are insignificant
alterations to Complainant’s mark. See U.S. News & World Report, Inc. supra; see also Bond & Co. Jewelers, Inc. supra; see also Compaq
Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb.
25, 2002) (finding that the domain name <compq.com> is confusingly
similar to the complainant’s COMPAQ mark because the omission of the letter “a”
in the domain name does not significantly change the overall impression of the
mark); see
also Am. Online, Inc. v.
Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity); see also Victoria's Secret v. Internet Inv.
Firm Trust, FA
94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name
<victoriasecret.com> to be confusingly similar to the complainant’s
trademark,
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain names. The burden to establish that
Respondent has rights or legitimate interests in the disputed domain names
shifts to the Respondent once Complainant has made a prima facie case in support of its allegations, pursuant to Policy
¶ 4(a)(ii). See Domtar, Inc. v. Theriault, FA
1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well
established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts
to respondent to show that it does have rights or legitimate interests pursuant
to paragraph 4 (a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a
prima facie case has been established by the complainant, the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that
Complainant has established a prima facie
case, thus shifting the burden to the Respondent. Due to the Respondent’s
failure to respond to these proceedings, the Panel infers that Respondent does
not have any rights or legitimate interests in the <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names. See G.D. Searle v Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”); see also Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to
submit a substantive answer in a timely fashion, the Panel accepts as true all
of the allegations of the complaint.”).
Complainant asserts that Respondent is not licensed or
authorized under its
Complainant contends that Respondent’s <victoriassecretmalaysia.com> and <victoriasecretworld.com>
domain names do not resolve to active websites. Complainant argues
that Respondent’s failure to make an active use of the disputed domain names is
neither a bona fide offering of goods
or services nor a legitimate noncommercial or fair use. The Panel finds that
Respondent’s failure to make an active use of either of these disputed domain
names is not a use 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 Pirelli & C. S.p.A. v. Tabriz,
FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or
legitimate interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint).
Complainant contends that
Respondent’s <victoriasecretheaven.com>
domain name resolves to a website used to sell products which compete with
Complainant’s mark. Respondent’s disputed domain name resolves to a website
that either resells the products Complainant offers under its
Moreover, Complainant asserts that Respondent’s <victoriasecretheaven.com>
domain name resolves to a website that prominently displays duplicatons of
Complainant’s
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the
<victoriasecretheaven.com> domain name to offer competing or
counterfeit products of those Complainant offers under its
Complainant further asserts that Internet users, searching for Complainant’s products, will be confused by Respondent’s <victoriasecretheaven.com> domain name when it resolves to a website that includes Complainant’s mark, as well as pictures and descriptions of the products related to Complainant’s VICTORIA’S SECRET mark, and offers similar online sales of Complainant’s products. Additionally, Complainant asserts that Internet users may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website, and that Respondent attempts to profit through this confusion. Respondent presumably profits by intentionally attracting Internet users seeking Complainant’s products to Respondent’s website. Therefore, the Panel finds Respondent’s use of the <victoriasecretheaven.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Additionally, Complainant contends that Respondent is using
the <victoriasecretheaven.com>
domain name to pass itself off as Complainant where Respondent’s disputed
domain name resolves to a website that displays Complainant’s VICTORIA’S SECRET
mark and displays Complainant’s products related to that mark. The Panel finds
Respondent’s attempt to pass itself off as Complainant constitutes bad faith
registration and use persuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc.
v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the
disputed domain name was registered and used in bad faith where the respondent
hosted a website that “duplicated Complainant’s mark and logo, giving every
appearance of being associated or affiliated with Complainant’s business . . . ”);
see also Target Brands, Inc. v. JK
Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad
faith because the respondent not only registered Complainant’s famous TARGET
mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added
Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point
of being indistinguishable from the original.”).
Respondent has failed to make an active use of the <victoriassecretmalaysia.com> and <victoriasecretworld.com> domain names. The Panel finds Respondent’s failure to make an active use of the confusingly similar disputed domain names as evidence that Respondent registered and used these disputed domain names in bad faith 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 that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretmalaysia.com>, <victoriasecretworld.com>, and <victoriasecretheaven.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum