Victoria’s Secret Stores Brand Management, Inc. v. Cao Zhiming
Claim Number: FA1008001343633
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 cao zhiming (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapvictoriassecret.com> and <wholesalevictoriassecret.com>, registered with XIN NET TECHNOLOGY CORPORATION.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 26, 2010. The Complaint was submitted in both Chinese and English languages.
On August 29, 2010, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names are registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the names. XIN NET TECHNOLOGY CORPORATION verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION registration agreement and thereby has 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 31, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 20, 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@cheapvictoriassecret.com and postmaster@wholesalevictoriassecret.com by e-mail. Also on August 31, 2010, the Chinese language 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 October 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <cheapvictoriassecret.com> and <wholesalevictoriassecret.com>, are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent has no rights to or legitimate interests in the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names.
3. Respondent registered and used the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is a designer, manufacturer and distributor of women’s clothing, lingerie, perfume and other related goods under the VICTORIA’S SECRET mark. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981). Complainant further owns trademark registrations for its mark with the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1,505,378 issued July 7, 1999).
Respondent, Cao Zhiming, registered the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names February 5, 2010. Respondent’s disputed domain names resolve to similar websites that display articles about various topics as well as third-party links to websites that purport to sell name brand clothing, some of which compete with Complainant’s offerings.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 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) and China’s SIPO (e.g., Reg. No. 1505378 issued July 7, 1999). 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 Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark. Complainant notes that the disputed domain names both contain a version of Complainant’s mark absent the apostrophe and space between the terms of the mark while adding the generic term “cheap” to one and “wholesale” to the other. Previous panels have found that the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to Policy ¶ 4(a)(i), and this Panel makes the same finding in this case. See 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.”).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark under a Policy ¶ 4(a)(i) analysis. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen 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 AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant is required to make a prima facie case to support these allegations. Once Complainant makes a prima facie case to support this allegation, the burden shifts to the Respondent to show that it does have such rights or legitimate interests in the disputed domain names. 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.”); see also 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)). The Panel finds that the Complainant made a prima facie case. Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Nonetheless, the Panel still examines the evidence in the record to determine whether it suggests that Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names, and further urges that Complainant has not given Respondent permission to use Complainant’s mark in any way. The WHOIS information for the disputed domain names identifies Respondent as “Cao Zhiming,” and no further evidence on record shows that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence that Respondent is commonly known by the disputed domain names, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names pursuant to a Policy ¶ 4(c)(ii) analysis. 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).
Complainant also contends that Respondent is using the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names to resolve to websites that contain articles or posts about various unrelated subjects. Complainant further alleges that imbedded within these articles are third-party links to websites that purport to sell name brand clothing such as “Ed Hardy” and “Ralph Lauren.” Complainant argues that Respondent receives click-through or referral fees from the websites advertised on its websites. The Panel finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it does not evidence a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain names to redirect Internet users seeking Complainant’s products to Respondent’s websites featuring third-party links to websites selling goods that compete with Complainant’s goods. Complainant further contends that this constitutes a disruption of Complainant’s business. The Panel agrees and finds that Respondent’s registration and use of the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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).”).
Complainant further alleges that Respondent is diverting Internet users who are seeking Complainant’s websites and products to the products of competing manufacturers in the clothing industry. Complainant argues that Respondent receives click-through fees from the businesses and websites advertised and linked-to on Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to intentionally attract Internet users to its website that features unrelated articles and writings as well as competing third-party links, presumably for financial gain, is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapvictoriassecret.com> and <wholesalevictoriassecret.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 18, 2010.
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