national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Luxxe marketing c/o Mona Hanson

Claim Number: FA1007001334509

 

PARTIES

Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington, D.C., USA.  Respondent is Luxxe marketing c/o Mona Hanson (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <freevictoriassecretlingerie.info>, registered with eNom, Inc. (R126-LRMS).

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2010.

 

On July 12, 2010, eNom, Inc. (R126-LRMS) confirmed by e-mail to the National Arbitration Forum that the <freevictoriassecretlingerie.info> domain name is registered with eNom, Inc. (R126-LRMS) and that Respondent is the current registrant of the name.  eNom, Inc. (R126-LRMS) has verified that Respondent is bound by the eNom, Inc. (R126-LRMS) 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 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@freevictoriassecretlingerie.info by e-mail.  Also on July 15, 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 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

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 <freevictoriassecretlingerie.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

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

 

3.      Respondent registered and used the <freevictoriassecretlingerie.info> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., designs, manufactures, advertises and sells womens lingerie, clothing and accessories through more than 1,000 retail stores and its official <victoriassecret.com> website.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, Luxxe marketing c/o Mona Hanson, registered the <freevictoriassecretlingerie.info> domain name on February 24, 2010.  Respondent’s disputed domain name resolves to the third-party website <brandgiftdepot.com> offering a $1,000 VICTORIA’S SECRET gift card after an Internet user enters personal information and completes qualifying offers from third-party companies.

 

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

 

The Panel finds that Complainant has established rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981).  See 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); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

Complainant argues that the <freevictoriassecretlingerie.info> domain name is confusingly similar to its VICTORIA’S SECRET mark.  Complainant notes that the disputed domain name contains its mark entirely, absent the apostrophe and space between the terms of the mark, and merely adds the generic and descriptive terms “free” and “lingerie” to the mark.  Complainant further alleges that the addition of the generic top-level domain (“gTLD”) “.info” is not relevant to Policy ¶ 4(a)(i) because every domain name requires a gTLD.  The Panel agrees and finds that Respondent’s <freevictoriassecretlingerie.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).  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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

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

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have rights and legitimate interests in the <freevictoriassecretlingerie.info> domain name under Policy ¶ 4(a)(ii).  Complainant is required to make a prima facie case in support of such allegations.  Once Complainant has met its burden the burden of proof shifts to Respondent to show that it does possess rights and legitimate interests in the <freevictoriassecretlingerie.info> domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  The Panel finds that Complainant has established a prima facie case in support of its contentions and that the burden of proof has successfully transferred to Respondent.  Due to Respondent’s failure to respond to these proceedings the Panel finds that it may presume that Respondent does not have rights and legitimate interests in the disputed domain name.  See 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.”).  However, the Panel will evaluate the evidence on record to determine whether Respondent has rights and legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent is not affiliated with Complainant nor has Respondent been authorized to use the VICTORIA’S SECRET mark.  The WHOIS information submitted by Complainant shows that the registrant of the <freevictoriassecretlingerie.info> domain name is “Luxxe marketing c/o Mona Hanson.”  Therefore, the Panel finds that Respondent is not commonly known by the <freevictoriassecretlingerie.info> domain name under Policy ¶ 4(c)(ii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).

 

Complainant alleges that the disputed domain name resolves to the third-party website of <brandgiftdepot.com>.  Complainant further alleges that the resolving website purports to offer Internet users a $1,000 VICTORIA’S SECRET gift card in exchange for personal information and the completion of a series of offers from businesses unrelated to Complainant.  Further, Complainant alleges that participants must also “agree to receive promotional emails and special offrs form trusted 3^rd parties…”  Complainant argues that Respondent receives referral fees for sending Internet users to the <brandgiftdepot.com> website or otherwise commercially benefits from tis use of the domain name.  The Panel finds that Respondent’s use of the disputed domain name to send Internet users to a third-party website offering a $1,000 VICTORIA’S SECRET gift card for completing offers and providing personal information is not 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).  See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using its VICTORIA’S SECRET mark and the disputed domain name to drive traffic to the <brandgiftdepot.com> website, which collects Internet users’ personal information and promotes businesses unrelated to Complainant.  Complainant argues that Respondent receives referral fees for each Internet user that it diverts to the above mentioned website.  Complainant contends that such use is evidence that Respondent registered and is using the domain name with the intent of attracting Internet users to its website for commercial gain.  The Panel finds that Respondent’s use of the disputed domain name indicates that it is attempting to attract Internet users to its website, presumably for financial gain, and that such registration and use is evidence of bad faith under Policy ¶ 4(b)(iv).  See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).

 

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

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  August 21, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum