Claim Number: FA1005001325529
Complainant is Victoria’s
Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriasecretbras.net>, 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.
Terry F. Peppard 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 <victoriasecretbras.net> 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@victoriasecretbras.net. Also on May 24, 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 18, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant markets women’s lingerie and other apparel,
personal care and beauty products, swimwear and outerwear under the
Complainant owns numerous trademark registrations with the
United States Patent and Trademark Office (“USPTO”) for the
Respondent registered the disputed <victoriasecretbras.com> domain name on February 10, 2010.
The disputed domain names resolves to a website offering for sale products purported to be Complainant’s, but also displaying links to the websites of unrelated third parties, and featuring links to a website with content referencing Complainant.
Respondent’s <victoriasecretbras.net> domain
name is confusingly similar to Complainant’s
Respondent is not commonly known by the <victoriasecretbras.com> domain name.
Respondent does not have any rights to or legitimate interests in this domain name.
Respondent registered and uses the <victoriasecretbras.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The same domain name was registered and is 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 name 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 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 owns registrations with the USPTO for the
Respondent’s <victoriasecretbras.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the domain name is merely a misspelled version of Complainant’s mark that omits the letter “s,” the apostrophe, and the space, and adds the generic descriptive word “bras”; and affixes the generic top-level domain (“gTLD”) “.com.”
Misspelling Complainant’s mark by omitting a single letter
does not result in a domain name distinct from and not confusingly similar to
Complainant’s mark. See
Myspace, Inc. v. Kang, FA 672160
(Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com>
domain name is confusingly similar to a complainant’s MYSPACE mark); 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 a complainant’s
Similarly, omitting an apostrophe and a space in forming the disputed domain name from the competing mark is not significant in determining confusing similarity because neither is permitted in a domain name. 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 Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation
and spaces between words are not significant in determining the similarity of a
domain name and a mark because punctuation and spaces are not reproducible in a
domain name.
Likewise, the addition of a generic descriptive word such as “bras” that directly relates to Complainant’s products, fails to prevent a conclusion of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described the complainant’s products, was insufficient to distinguish a respondent’s <duracellbatteries.com> from a complainant’s DURACELL mark).
Finally, the gTLD “.com” plays no role in differentiating
the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Respondent’s contested <victoriasecretbras.com> domain name
is confusingly similar to Complainant’s
Under Policy ¶ 4(a)(ii), Complainant has the burden of presenting a prima facie case. Once this is done, the burden shifts to Respondent to demonstrate its rights to or legitimate interests in the disputed domain name, if any. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Complainant has met its burden under this head of the Policy. Respondent’s failure to respond to the Complaint filed in this proceeding allows this Panel to conclude that Respondent has no rights or legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation supports a finding for a complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
Nonetheless, we will examine the record before us, in light of the considerations 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 noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <victoriasecretbras.com> domain name. Moreover, the pertinent WHOIS information lists the registrant only as “Russell Oxley,” which does not resemble the contested domain name. On this record, we conclude that Respondent is not commonly known by the disputed domain so as to have demonstrated rights to or legitimate interests in the contested domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent has no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
We also observe that Complainant asserts, without objection from Respondent, that Respondent uses the <victoriasecretbras.com> domain name to divert Internet users to a website offering links to a website offering for sale what are purported to be products of Complainant, as well as links to the websites of unrelated third-parties, and links to websites featuring content that references Complainant. In the circumstances here presented, we may safely presume that Respondent receives click-through or similar fees for visits by Internet users to the websites resolving from the displayed links. This behavior by Respondent is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the contested domain name under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered both that complainant’s products and those of that complainant’s business competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority, as well as others’ goods, is not a bona fide use).
Moreover, Respondent’s employment of links to the websites
of unrelated third-parties does not constitute a bona fide offering or goods or services or a legitimate
noncommercial or fair use of the contested domain name pursuant to Policy ¶
4(c)(i) or 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither 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) because the registrant
presumably receives compensation for each misdirected Internet user); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of
hyperlinks, some of which advertise Complainant and its competitors’
products. The Panel finds that this use
of the disputed domain name does not constitute 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).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s attempts to sell the purported products of
Complainant on Respondent’s resolving website as alleged in the Complaint demonstrates
bad faith registration and use of the disputed domain name under Policy ¶
4(b)(iii) in that it disrupts Complainant’s business. See Instron Corp. v. Kaner,
FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent
registered and used disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by using the domains to operate websites that compete with a
complainant’s business); see also
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that a respondent registered and used a contested domain name in bad faith
within the meaning of Policy ¶ 4(b)(iii) where it diverted business from a
complainant to a competitor’s website).
From the evidence presented, we conclude that Respondent
uses Complainant’s mark in the <victoriasecretbras.com>
domain name in order to drive traffic to Respondent’s website, from which
Respondent receives financial benefit either through the sale of Complainant’s
purported products or through pay-per-click revenue derived from the links
featured on that website. Respondent’s
efforts thus to attract Complainant’s prospective customers to Respondent’s own
website for Respondent’s commercial gain indicates bad faith registration and
use of the contested domain name under Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot,
FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent
registered and used the <myspacebot.com> domain name in bad faith by
diverting Internet users seeking a complainant’s website to its own website for
commercial gain where that respondent likely profited from this diversion
scheme); see also T-Mobile USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith registration and use of the domain
name under Policy ¶ 4(b)(iv)); further see TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a respondent used
a domain name, for commercial gain, to attract Internet users to a business
competitor of a complainant).
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 <victoriasecretbras.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 30, 2010
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