Claim Number: FA1005001325387
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 <thevictoriasecret.com>, registered with ENOM, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2010.
On May 19, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <thevictoriasecret.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@thevictoriasecret.com. Also on May 20, 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 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
<thevictoriasecret.com> domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <thevictoriasecret.com> domain name.
3. Respondent registered and used the <thevictoriasecret.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 under the
Respondent, Aizi Reza Razak, registered the <thevictoriasecret.com> domain name on February 12, 2010. The disputed domain name resolves to a website offering links to online sales of what are purported to be Complainant’s products. The website also prominently displays Complainant’s mark and provides photos of goods resembling Complainant’s products, including photos of women’s lingerie and apparel. Finally, Respondent’s website displays advertising for third parties unrelated to Complainant.
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 <thevictoriasecret.com>
domain name is confusingly similar to its
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first show that Respondent lacks rights or legitimate interests in the <thevictoriasecret.com> domain name pursuant to Policy ¶ 4(a)(ii). After Complainant establishes this prima facie case, the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel may find Respondent lacks rights or legitimate interests in the disputed domain name if Respondent fails to submit a Response. 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).”). Despite Respondent’s failed to submit a Response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Aizi Reza Razak” as the registrant of the <thevictoriasecret.com> domain name. Complainant also states it is not affiliated with Respondent and that it has not authorized Respondent to use its mark in a domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name under 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).
Complainant alleges the disputed domain name resolves to a
website offering links to online sales of what are purported to be
Complainant’s products. A screen shot of
the website shows Complainant’s mark prominently displayed throughout the
site. The website also provides photos
of goods resembling Complainant’s products, including photos of women’s
lingerie and apparel. Complainant also
alleges Respondent’s website displays advertising for third parties unrelated
to Complainant. Respondent
most likely profits from these uses through the receipt of pay-per-click fees. The Panel finds these uses do not constitute
a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or 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
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <thevictoriasecret.com> domain name to divert Internet users seeking Complainant’s products to Respondent’s competing site. Also, Respondent’s use of a confusingly similar domain name to redirect Internet users to third-party websites disrupts Complainant’s business. Therefore, the Panel finds this behavior 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 claims Respondent is intentionally attempting to
attract Internet users to Respondent’s website for commercial gain by creating
a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s domain name and
site. As previously discussed, Respondent’s disputed
domain name is confusingly similar to Complainant’s mark. Furthermore, Respondent features products
purporting to be Complainant’s merchandise and prominently displays
Complainant’s mark on its resolving website.
Respondent also presumably receives pay-per-click fees from the links
featured on its website. Therefore, the
Panel finds this behavior is additional evidence of registration and use in bad
faith 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.”); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
The Panel finds 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 <thevictoriasecret.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 18, 2010
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