national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Victoria Secret Escort

Claim Number: FA1008001340297

 

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 Victoria Secret Escort (“Respondent”), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretescort.com>, registered with ENOM, INC.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2010.

 

On August 11, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretescort.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 August 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 1, 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@victoriasecretescort.com by e-mail.  Also on August 12, 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 September 14, 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 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.

 

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 <victoriasecretescort.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 <victoriasecretescort.com> domain name.

 

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

 

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

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., holds multiple 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).  Complainant also holds trademark registrations with the Intellectual Property Corporation of Malaysia (“IPCM”) for the VICTORIA’S SECRET mark (e.g., Reg. No. 94007746 registered August 27, 1994).  Complainant uses the VICTORIA’S SECRET mark in connection with women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. 

 

Respondent, Victoria Secret Escort, registered the <victoriasecretescort.com> domain name on January 30, 2008.  The disputed domain name resolves to a Malaysian escort service.

 

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 claims rights in the VICTORIA’S SECRET mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981) as well as with the IPCM (e.g., Reg. No. 94007746 registered August 27, 1994).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).  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 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 avers Respondent’s <victoriasecretescort.com> domain name is confusingly similar to its VICTORIA’S SECRET mark under.  In the disputed domain name, Respondent omits the apostrophe and the letter “s” from the first word in Complainant’s mark.  Respondent also omits the space between the words in Complainant’s mark. Next, Respondent adds the generic term “escort” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds minor alterations combined with the addition of a generic term and gTLD do not sufficiently distinguish a domain name from a 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 U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Thus, the Panel finds Respondent’s <victoriasecretescort.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <victoriasecretescort.com> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests in the domain name.  See 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.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  Despite Respondent’s failure to submit a Response, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Although the WHOIS information lists “Victoria Secret Escort” as the registrant of the disputed domain name, the record does not contain any affirmative evidence that Respondent is commonly known by this name.  Accordingly, the Panel finds Respondent is not commonly known by the <victoriasecretescort.com> domain name pursuant to Policy ¶ 4(c)(ii).  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).

 

Complainant claims that the <victoriasecretescort.com> domain name resolves to a Malaysian escort service and an adult-oriented web site.  Complainant argues that although the business calls itself “Victoria Secret Escort Agency,” the title of the site is “KL Escorts | KL Escort Agency, Massage | Kuala Lumpur Escorts | Call Girl KL.”  Thus, Complainant contends the actual name of the business is “KL Escorts” or “KL Escort Agency.”  The Panel finds Respondent use of a confusingly similar domain name to resolve to an escort service and adult-oriented website does not qualify as 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 Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use of its domain name to link unsuspecting Internet traffic to an adult orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent uses a domain name that is confusingly similar to its VICTORIA’S SECRET mark in order to redirect Internet traffic seeking Complainant’s products to Respondent’s website.  The Panel presumes that Respondent profits from the use of the <victoriasecretescort.com> domain name to promote its escort service.  Therefore, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.  Consequently, the Panel finds Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).  See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent utilized a domain name confusingly similar to the complainant’s mark and used a confusingly similar pornographic depiction of the complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site).

 

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

 

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 <victoriasecretescort.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist, Panelist

Dated:  September 23, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum