Claim Number: FA1005001325862
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 <secret-victorias.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 20, 2010.
On May 21, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <secret-victorias.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 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 firstname.lastname@example.org. 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 21, 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:
domain name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <secret-victorias.com> domain name.
3. Respondent registered and used the <secret-victorias.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Mark Reg. No. Registration Date
Respondent, Speedeenames.com c/o Troy Rushton, registered the <secret-victorias.com> domain name on April 13, 2010. The disputed domain name resolves to a website advertising the sale of products purported to be Complainant’s, offering links to unrelated third-party websites and displaying informational content referencing 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 owns numerous trademark registrations with the
USPTO for the
Complainant alleges that Respondent’s <secret-victorias.com> domain name is
confusingly similar to Complainant’s VICTORIA’S SECRET mark because the
disputed domain name modifies Complainant’s mark only by reversing the order of
the words, omitting the apostrophe and space between the words, and adding a
hyphen and the generic top-level domain (“gTLD”) “.com.” The Panel finds that reversing the order of
the words in Complainant’s mark does not create a new domain name that is
distinct from Complainant’s mark. See Bloomberg L.P. v. Herrington Hart, NIRT,
FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel
finds that the use of transposed words, similar to transposed letters does not
suffice to differentiate the disputed domain name from Complainant’s mark to
create a separate and distinct mark.”);
see also Toronto Convention & Visitors Ass’n v. This Domain is For
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has the burden of establishing a prima facie case that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that Complainant has met that burden, thereby the responsibility to demonstrate rights and legitimate interests to Respondent. Respondent, however, has failed to respond to the Complaint. Accordingly, the Panel infers that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); 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.”). The Panel elects, however, to consider all the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is neither commonly known by the disputed domain name nor authorized to use Complainant’s mark in the disputed domain name. As the WHOIS information for the disputed domain name lists the registrant as “speedeenames.com Troy Rushton,” the Panel finds that this is evidence that Respondent is not commonly known by the disputed name and therefore does not possess rights and legitimate interests in the disputed domain name according to 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent’s <secret-victorias.com> domain name resolves to an e-commerce website created by “Speedlings,” a third-party website that designs websites around keywords chosen by domain name registrants that are likely to attract traffic. Complainant contends that the resolving website provides links to competing online providers of products purporting to be Complainant’s, unrelated third-party websites and informational content that refers to Complainant in some way. Complainant asserts that Respondent’s resolving website is created by Speedlings with the purpose of maximizing Respondent’s profit through affiliate commissions, advertisements, and pay-per-click revenue. The Panel finds that linking to unauthorized competitors selling Complainant’s purported products, as well as other unrelated websites, in return for profit is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that many of the links advertised on the webpage resolving from the <secret-victorias.com> domain name redirect Complainant’s potential customers to auction sites purportedly selling Complainant’s products. By linking to competing sellers of Complainant’s products, Respondent is disrupting Complainant’s business, demonstrating bad faith registration and use according to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant alleges that Respondent appropriated Complainant’s mark in the <secret-victorias.com> domain name and designed the resolving website around Complainant’s mark as a keyword in order to increase traffic to Respondent’s website. Complainant argues that Respondent’s resolving website was designed to commercially profit Respondent through commissions, affiliate fees, and pay-per-click revenue as a result of Internet users’ confusion about Complainant’s presence and association with Respondent. The Panel finds Respondent’s activities in misleading Internet users to attract them to Respondent’s own website for commercial gain indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <secret-victorias.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 25, 2010
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