Claim Number: FA1005001323768
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 <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>, <victoriassecretjp.com>, <victoriassecretjapanshop.net>, <victoriassecretjapanstore.net>, and <victoriassecretjp.net>, registered with Wild West Domains, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2010.
On May 10, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretjapanshop.com>, <victoriassecretjp.com>, <victoriassecretjapanstore.com>, <victoriassecretjapanshop.net>, <victoriassecretjp.net> and <victoriassecretjapanstore.net> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 May 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@victoriassecretjapanshop.com, postmaster@victoriassecretjapanstore.com, postmaster@victoriassecretjp.com, postmaster@victoriassecretjapanshop.net, postmaster@victoriassecretjapanstore.net, and postmaster@victoriassecretjp.net. Also on May 11, 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 June 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant 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
Complainant holds registrations with the United States
Patent and Trademark Office (“USPTO”) for its
Respondent registered the disputed domain names <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>, <victoriassecretjp.com>, <victoriassecretjp.net>, <victoriassecretjapanshop.net> and <victoriassecretjapanstore.net>, on or about January 13, 2009.
The <victoriassecretjapanshop.net>, <victoriassecretjapanstore.net>,
and <victoriassecretjp.net> domain names resolve to parked
webpages that offer links to third-party websites, including links to those of
Complainant’s business competitors.
Respondent
uses the <victoriassecretjapanshop.com>, <victoriassecretjp.com>
and <victoriassecretjapanstore.com>, domain names to
redirect Internet users to the website of a Japanese company called
Ochanoko-net, Inc. at the domain name <ocnk.net>.
This
third-party website offers “e-commerce online shopping cart solutions” and
“e-commerce web hosting,” services that compete with Complainant’s
business.
Ochanoko-net,
Inc. pays domain name owners like Respondent referral fees for redirecting
Internet users to its website.
These domain names previously resolved to <americanfashionjp.com>, a website which Respondent owns, and that offered which offers counterfeit versions of Complainant’s clothing products and other merchandise in competion with Complainant’s products.
All of Respondent’s domain names are confusingly similar to
Complainant’s
Complainant is not affiliated with Respondent, nor has it given Respondent permission to use its mark in a domain name.
Respondent does not have any rights to or legitimate interests in the domain names <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>, <victoriassecretjp.com>, <victoriassecretjapanshop.net>, <victoriassecretjp.net> and <victoriassecretjapanstore.net>.
Respondent registered and uses the contested domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of any of the disputed domain names; and
iii. the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain names registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the
As
the [complainant’s] mark is registered with the USPTO, [the] complainant has
met the requirements of Policy ¶ 4(a)(i).
See also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant established rights in the GOOGLE trademark through its holding of mark registrations around the world).
Respondent’s <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>,
<victoriassecretjp.com>, <victoriassecretjapanshop.net>,
<victoriassecretjp.net> and <victoriassecretjapanstore.net>, domain
names are confusingly similar to Complainant’s
These alterations do not distinguish Respondent’s disputed domain names from Complainant’s mark under the Policy. See 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 a domain name from a mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); further see 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 mark of a complainant combined with a generic term); finally, see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name, such as “.net” or “.com”, does not affect the domain name for purposes of determining whether it is identical or confusingly similar to a competing mark under the Policy).
Therefore, the Panel finds that Respondent’s <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>,
<victoriassecretjapanshop.net>, <victoriassecretjp.com>,
<victoriassecretjapanstore.net>, and <victoriassecretjp.net>
domain names are confusingly similar to Complainant’s
Policy ¶ 4(a)(ii) requires that Complainant show prima facie that Respondent lacks rights to and legitimate interests in the disputed domain names. Once Complainant establishes such a prima facie case, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to 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 a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent).
The Panel may view Respondent’s failure to submit a Response in this proceeding as evidence that Respondent lacks rights to or legitimate interests in the contested domains.
See 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 has failed to respond to the Complaint herein, we will analyze the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Complainant is not affiliated with Respondent, nor has it given Respondent permission to use its mark in a domain name. In addition, the pertinent WHOIS information lists the registrant of the disputed domain names only as “YTB”, which does not resemble any of the contested domains. On this record, we conclude that Respondent is not commonly known by any of the disputed domain names so as to have demonstrated rights to or legitimate interests in the contested domains pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the relevant WHOIS information, to support such a conclusion, and where a complainant’s asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also note that Complainant asserts, without objection
from Respondent, that the disputed <victoriassecretjapanshop.net>, <victoriassecretjapanstore.net>,
and <victoriassecretjp.net> domain names each resolve to parked
webpages that offer links to third-party websites, including links to the
websites of Complainant’s business competitors, and that Respondent profits
from revenues paid visits by Internet users to those websites. Therefore, we conclude that
Respondent’s use of the disputed domain names as alleged does not constitute a bona fide offering of goods and services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Gold
Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar.
12, 2008) (where a disputed domain name had been parked, a panel found the “the Registrant is responsible for the content of the material
appearing on the webpage associated with the domain name in dispute.”); see also Disney
Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding
that the operation of a pay-per-click website at a contested domain name was
not 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)).
Furthermore,
Complainant claims that Respondent previously used the domain names <victoriassecretjapanshop.com>,
<victoriassecretjapanstore.com> and <victoriassecretjp.com>
to redirect Internet users to a website at the domain name
<americanfashionjp.com>, which offers counterfeit versions of
Complainant’s products. Complainant also
offers evidence that Respondent is the owner of the domain name <americanfashionjp.com>. There being no dispute as to these
assertions, we conclude that Respondent used the disputed domain names to sell goods
which competed with Complainant’s products.
This is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use of the disputed domain
name pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones
HP Milenium
Respondent’s use of the confusingly similar
domain name to sell counterfeit versions of Complainant’s products is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003): “Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain names to redirect Internet users to parked websites featuring links to third-party websites that compete with Complainant’s business and to third-party websites that sell competing and counterfeit merchandise disrupts Complainant’s business. Therefore, we conclude that Respondent’s behavior constitutes registration and use of the contested domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See 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 a disputed domain name to operate a commercial search engine with links to the websites of a complainant’s business competitors); see also 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).
From the evidence of record, we conclude that Respondent
registered the disputed domain names with the intent to attract Internet users
to the websites of Respondent’s choosing for its commercial gain by creating a
likelihood of confusion with Complainant’s mark as to the possible source,
sponsorship, affiliation or endorsement of Respondents’ domain names and the
sites to which they resolve.
Respondent’s activities in using the disputed domain names to receive
fee income and to sell competing and counterfeit goods is evidence of
Respondent’s bad faith registration and use of the domains pursuant to Policy ¶
4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing commercial
websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial
gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
To the same effect, see also See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <victoriassecretjp.com>, <victoriassecretjp.net> <victoriassecretjapanshop.com>, <victoriassecretjapanstore.com>, <victoriassecretjapanshop.net> and <victoriassecretjapanstore.net> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 30, 2010
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