Claim Number: FA1005001326307
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 <buyvictoriassecret.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2010.
On May 25, 2010, WILD WEST DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <buyvictoriassecret.net> domain name is registered with WILD WEST DOMAINS, INC. and that Respondent is the current registrant of the name. 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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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 email@example.com. Also on May 26, 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 Judge Ralph Yachnin 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 <buyvictoriassecret.net> domain name.
3. Respondent registered and used the <buyvictoriassecret.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Mark Reg. No. Registration Date
Respondent, Cesira Di Giovine, registered the <buyvictoriassecret.net> domain name on November 13, 2009. The disputed domain name resolves to a website prominently displaying Complainant’s VICTORIA’S SECRET mark, photographs of Complainant’s models, a video excerpt from Complainant’s fashion show, and numerous links to online sales of what are purported to be Complainant’s products, as well as links to other businesses both in competition with and 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.
Mark Reg. No. Registration Date
The Panel finds that such extensive trademark registration
supports a finding of Complainant’s rights in the
Complainant alleges that Respondent’s <buyvictoriassecret.net> domain name is confusingly similar to
Complainant’s VICTORIA’S SECRET mark as the only differences are the omission
of the apostrophe and the space between the two words and the addition of the
generic term “buy” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that omitting the apostrophe
and the space fail to prevent confusing similarity because neither element is permitted
in a domain name. See Daddy’s Junky
Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003)
(“The lack of an apostrophe in the domain name is not a distinguishing
difference because punctuation is not significant in determining the similarity
of a domain name and 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.”). The Panel also finds that a generic term
added to Complainant’s mark does not distinguish the disputed domain name for
the purposes of Policy ¶ 4(a)(i). See
Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end); see also 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 identical mark of the complainant combined with a generic word or
term). The Panel finds that gTLDs are not
significant when evaluating confusing similarity between the disputed domain
name and Complainant’s mark. See Katadyn N. Am. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires an adequate prima facie case to support an allegation by Complainant that Respondent lacks rights and legitimate interests in the disputed domain name. As the Panel finds that Complainant has presented a sufficient case in this instance, the burden to demonstrate rights and legitimate interests now shifts to Respondent. Subsequent to Respondent’s failure to respond, the Panel finds that it may infer that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii) in the disputed domain name as Complainant’s assertions are viewed as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Complainant contends that Respondent does not possess rights
and legitimate interests in the <buyvictoriassecret.net>
domain name because Respondent is not commonly known by the disputed domain
name and is not licensed by Complainant to use the mark in the disputed domain
name. The Panel finds that the failure
of the WHOIS information to nominally associate Respondent with the disputed
domain name, listing the registrant only as “Cesira Di Giovine,” and the lack
of other positive evidence is sufficient to prove that Respondent lacks rights
and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v.
DomainWorks Inc., FA 882172 (Nat. Arb.
Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by
the <thirteen.com> domain name based on all evidence in the record, and
the respondent did not counter this argument in its response); see also
Complainant alleges that Respondent’s <buyvictoriassecret.net> domain name
resolves to a website making prominent use of Complainant’s protected material,
including Complainant’s mark and photo and video images. Complainant also argues that Respondent’s
resolving website links to sites offering online sales of products purported to
be Complainant’s, competing sites and unrelated sites. The Panel finds that using the disputed
domain name in connection with such activities is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use according to Policy ¶ 4(c)(i)
or ¶ 4(c)(iii). See 24 Hour Fitness USA, Inc.
v. 24HourNames.com-Quality Domains For
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <buyvictoriassecret.net> domain name
resolves to a website advertising online sales of products purported to be
Complainant’s along with links to other competing and unrelated websites,
including the <fredericks.com> and <snapfish.com> domain names. The Panel finds that Respondent’s use of the
disputed domain name to promote and advertise Complainant’s competitors reveals
bad faith registration and use under Policy ¶ 4(b)(iii)
as such activities disrupt Complainant’s business. See
Complainant contends that Respondent’s use of Complainant’s VICTORIA’S SECRET mark in Respondent’s <buyvictoriassecret.net> domain name is intended to confusingly attract Internet users to Respondent’s site, diverting them away from Complainant’s site for Respondent’s profit, presumably resulting from pay-per-click fees. Complainant argues that in addition to the use of its mark in the disputed domain name, the presence of Complainant’s mark on the resolving webpage, along with various photo and video images belonging to Complainant, further increases the likelihood of consumer confusion. The Panel finds efforts to attract Complainant’s customers, confuse them as to Respondent’s affiliation with Complainant and profit from their presence on its website indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); 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 <buyvictoriassecret.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 30, 2010
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