national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. Cyber Domain Services Pvt.Ltd.

Claim Number: FA1006001332753

 

PARTIES

Complainant is Victoria’s Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law PLLC, Washington D.C., USA.  Respondent is Cyber Domain Services Pvt.Ltd. (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretcareers.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010.

 

On July 1, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcareers.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name.  DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@victoriassecretcareers.com by e-mail.  Also on July 8, 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 August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <victoriassecretcareers.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <victoriassecretcareers.com> domain name.

 

3.      Respondent registered and used the <victoriassecretcareers.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria’s Secret Stores Brand Management, owns the VICTORIA’S SECRET trademarks and services marks which Complainant licenses to other subsidiaries.  Complainant, its licensees, and predecessors have used the VICTORIA’S SECRET marks to market and sell women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear.  Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its VICTORIA’S SECRET mark and related marks:

 

VICTORIA’S SECRET

Reg. No. 1,146,199 issued January 20, 1981

Reg. No. 1,908,042 issued August 1, 1995

Reg. No. 3,480,533 issued August 5, 2008

 

LOVE PINK VICTORIA’S SECRET

Reg. No. 3,805,362 issued June 22, 2010

 

VICTORIA’S SECRET SPORT

Reg. No. 3,693,125 issued October 6, 2009

 

VICTORIA’S SECRET PINK

Reg. No. 3,226,760 issued April 10, 2007

Reg. No. 3,502,263 issued September 16, 2008

Reg. No. 3,520,974 issued October 21, 2008

Reg. No. 2,820,380 issued March 2, 2004

Reg. No. 2,992,758 issued September 6, 2005

 

GLAMOUR BY VICTORIA’S SECRET

Reg. No. 2,890,467 issued September 28, 2004

 

MOOD BY VICTORIA’S SECRET

Reg. No. 3,126,002 issued August 8, 2006

 

VICTORIA’S SECRET GARDEN

Reg. No. 3,013,385 issued November 8, 2005

 

VICTORIA’S SECRET HOME

Reg. No. 2,994,208 issued September 13, 2005

 

VICTORIA’S SECRET ESCAPES

Reg. No. 2,861,386 issued July 6, 2004

 

VICTORIA’S SECRET ANGELS

Reg. No. 3,670,768 issued August 18, 2009

 

NO ONE FITS WOMEN LIKE VICTORIA’S SECRET

Reg. No. 3,623,754 issued May 19, 2009

 

VICTORIA’S SECRET LOOK BOOK

Reg. No. 3,467,728 issued July 15, 2008

 

VICTORIA’S SECRET SPA

Reg. No. 3,426,643 issued May 13, 2008

 

Respondent, Cyber Domain Services Pvt. Ltd., registered the <victoriassecretcareers.com> domain name on December 12, 2006.  The disputed domain name resolves to a website that contains a list of hyperlinks, the majority of which resolve to Complainant’s competitors in the women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear business.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s holds multiple trademark registrations with the USPTO:

 

VICTORIA’S SECRET

Reg. No. 1,146,199 issued January 20, 1981

Reg. No. 1,908,042 issued August 1, 1995

Reg. No. 3,480,533 issued August 5, 2008

 

LOVE PINK VICTORIA’S SECRET

Reg. No. 3,805,362 issued June 22, 2010

 

VICTORIA’S SECRET SPORT

Reg. No. 3,693,125 issued October 6, 2009

 

VICTORIA’S SECRET PINK

Reg. No. 3,226,760 issued April 10, 2007

Reg. No. 3,502,263 issued September 16, 2008

Reg. No. 3,520,974 issued October 21, 2008

Reg. No. 2,820,380 issued March 2, 2004

Reg. No. 2,992,758 issued September 6, 2005

 

GLAMOUR BY VICTORIA’S SECRET

Reg. No. 2,890,467 issued September 28, 2004

 

MOOD BY VICTORIA’S SECRET

Reg. No. 3,126,002 issued August 8, 2006

 

VICTORIA’S SECRET GARDEN

Reg. No. 3,013,385 issued November 8, 2005

 

VICTORIA’S SECRET HOME

Reg. No. 2,994,208 issued September 13, 2005

 

VICTORIA’S SECRET ESCAPES

Reg. No. 2,861,386 issued July 6, 2004

 

VICTORIA’S SECRET ANGELS

Reg. No. 3,670,768 issued August 18, 2009

 

NO ONE FITS WOMEN LIKE VICTORIA’S SECRET

Reg. No. 3,623,754 issued May 19, 2009

 

VICTORIA’S SECRET LOOK BOOK

Reg. No. 3,467,728 issued July 15, 2008

 

VICTORIA’S SECRET SPA

Reg. No. 3,426,643 issued May 13, 2008

 

The Panel finds Complainant has established rights in its VICTORIA’S SECRET mark and related marks under Policy ¶ 4(a)(i) based on Complainant’s trademark registrations with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).

 

Complainant alleges that Respondent’s <victoriassecretcareers.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The disputed domain name removes the apostrophe separating the letters “a” and “s” in the VICTORIA’S portion of Complainant’s mark.  The disputed domain name further removes the space separating the terms of Complainant’s mark.  Respondent then adds the generic term “careers” and the generic top-level domain (“gTLD”) “.com.”  The Panel determines that the removal of an apostrophe and a space coupled with the addition of a generic term and a gTLD all fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  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 the domain name from the mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Thus, the Panel concludes that Respondent’s <victoriassecretcareers.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <victoriassecretcareers.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <victoriassecretcareers.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <victoriassecretcareers.com> domain name under Policy ¶ 4(c).  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.”).

 

Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that would support a finding that Respondent is commonly known by the <victoriassecretcareers.com> domain name.  To the contrary, Complainant argues that Respondent is not affiliated with Complainant in any way and that Complainant has not authorized or licensed Respondent to use Complainant’s VICTORIA’S SECRET mark.  Furthermore, the WHOIS information identifies the domain name registrant as “Cyber Domain Services Pvt. Ltd.,” which Complainant contends is not similar to the <victoriassecretcareers.com> domain name.  Based on the evidence in the record, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Respondent’s <victoriassecretcareers.com> domain name resolves to a website that contains a list of third-party hyperlinks, the majority of which resolve to Complainant’s competitors in the women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear business.  Respondent likely receives click-through fees from the aforementioned hyperlinks.  The Panel determines that Respondent’s use of the <victoriassecretcareers.com> 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> 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 finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent uses the <victoriassecretcareers.com> domain name to resolve to a website that features a third-party hyperlink directory.  The majority of the featured hyperlinks resolve to Complainant’s competitors in the women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear business.  The Panel finds Respondent’s use of the disputed domain name to feature hyperlinks of Complainant’s competitors disrupts Complainant’s business by diverting potential customers away from Complainant and to Complainant’s competitors.  The Panel further finds that Respondent’s use of the <victoriassecretcareers.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Respondent receives a click-through fee each time an Internet user clicks on one of the aforementioned hyperlinks featured on the website resolving from the <victoriassecretcareers.com> domain name.  Respondent is attempting to profit from Internet users that access the website with the mistaken belief that the disputed domain name and resolving website are affiliated with or sponsored by Complainant.  Respondent’s attempt to profit from Internet users’ confusion constitutes bad faith registration and use of the <victoriassecretcareers.com> domain name under Policy ¶ 4(b)(iv).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <victoriassecretcareers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  August 10, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum