Claim Number: FA1006001331835
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 <victoriasecretbulgaria.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2010.
On June 27, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <victoriasecretbulgaria.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 June 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@victoriasecretbulgaria.com by e-mail. Also on June 29, 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 July 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 "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
<victoriasecretbulgaria.com> domain name is confusingly similar to
Complainant’s
2. Respondent does not have any rights or legitimate interests in the <victoriasecretbulgaria.com> domain name.
3. Respondent registered and used the <victoriasecretbulgaria.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management,
Inc., has been selling women’s lingerie and other apparel, personal care and
beauty products, swimwear, and outerwear under the VICTORIA’S SECRET mark since
1977. Complainant has over 1,000 stores
throughout the
Respondent, Emil Naydenov, registered the <victoriasecretbulgaria.com>
domain name on March 3, 2008.
Respondent’s disputed domain name resolves to a website that states: “We
are the service for buying
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.
The Panel finds that Complainant has rights in its
Complainant argues that the <victoriasecretbulgaria.com>
domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark
because it contains Complainant’s mark entirely, absent the apostrophe and
space between the terms and the letter “s”, and adds the geographic term
“Bulgaria” and the generic top-level domain (“gTLD”) “.com.” Complainant suggests that such changes are
not sufficient to render the domain name distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s disputed
domain name is confusingly similar to Complainant’s
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In its Complaint, Complainant alleges that Respondent does not have rights and legitimate interests in the <victoriasecretbulgaria.com> domain name. Complainant bears the burden of proof to produce a prima facie case in support of its allegations. Once Complainant has established a prima facie case that Respondent does not possess rights and legitimate interests in the <victoriasecretbulgaria.com> domain name the burden of proof shifts to Respondent to establish that it does have rights and legitimate interests in the domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has met its burden of proof, and that the burden has properly been transferred to Respondent. However, since Respondent has failed to respond to these proceedings the Panel finds that it may make all reasonable inferences from such failure in deciding the case at hand. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); 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.”). Nevertheless, the Panel will continue to scrutinize the evidence on record to determine whether Respondent has rights and legitimate interests in the <victoriasecretbulgaria.com> domain name under Policy ¶ 4(c).
Complainant asserts
that Respondent has never been affiliated with or sponsored by Complainant to
register and operate a website utilizing Complainant’s
Complainant alleges
that Respondent is using the <victoriasecretbulgaria.com>
domain name to mislead Internet users into believing Respondent is an
authorized buying service of Complainant’s goods. Complainant argues that it never licensed or
authorized Respondent to sell Complainant’s goods and that as such Respondent
is not using the domain name in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use. The Panel
finds that Respondent’s use of the disputed domain name to purportedly sell
Complainant’s goods while not being licensed or authorized to do so by
Complainant is not a use in connection with 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 G.D. Searle & Co. v. Mahony,
FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use
of the disputed domain name to solicit pharmaceutical orders without a license
or authorization from the complainant does not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i)); see also Nokia Corp.
v. Eagle, FA 1125685
(Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed
domain name to pass itself off as the complainant in order to advertise and
sell unauthorized products of the complainant was not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii)).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent is using the disputed domain name to sell unauthorized or counterfeit versions of its products. The Panel infers that Respondent’s diversion of Internet users seeking Complainant’s products and services to Respondent’s website that sells Complainant’s goods creates a disruption in Complainant’s business. Therefore, the Panel finds that Respondent’s use of the disputed domain name to sell unauthorized, unlicensed or counterfeit goods of Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent is using the <victoriasecretbulgaria.com>
domain name to attract Internet users to Respondent’s website that purports to
be a buying service for Complainant’s goods.
Complainant argues that some Internet users will purchase goods from
Respondent’s website, and that as such Respondent registered and is using the
disputed domain name in bad faith.
Complainant submits that it is unable to discern whether Respondent
sells unauthorized goods of Complainant or counterfeit versions of its goods,
but argues that Respondent is indeed attempting to attract Internet users to
its website for commercial gain by using Complainant’s
The Panel finds that 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 <victoriasecretbulgaria.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2010
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