Victoria's Secret Stores Brand Management, Inc. v. Sea Goddess Swimwear
Claim Number: FA1009001345057
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 Sea Goddess Swimwear (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretswimwear.net>, registered with GoDaddy.com, Inc.
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 September 3, 2010.
On September 8, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretswimwear.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. 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 September 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@victoriasecretswimwear.net by e-mail. Also on September 30, 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 October 15, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <victoriasecretswimwear.net>, is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent has no rights to or legitimate interests in the <victoriasecretswimwear.net> domain name.
3. Respondent registered and used the <victoriasecretswimwear.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., owns the exclusive right to design, manufacture, promote, sell and distribute lingerie, swimwear, apparel, beauty products and other goods bearing the VICTORIA’S SECRET mark. Complainant holds numerous 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, Sea Goddess Swimwear, registered the <victoriasecretswimwear.net> domain name on January 21, 2009. The disputed domain name resolves to a website that features swimwear for sale that seeks to compete with Complainant’s business. The site also provides information about beaches and beach activities, which are unrelated to Complainant.
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 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.
Complainant contends that it has well-established rights in the VICTORIA’S SECRET mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. 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 Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has established rights under Policy ¶ 4(a)(i) in the VICTORIA’S SECRET mark through Complainant’s registrations with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981).
Complainant contends that Respondent’s <victoriasecretswimwear.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name contains Complainant’s VICTORIA’S SECRET mark, removes the space between the terms in Complainant’s mark and the letter “s,” omits the apostrophe, combines the mark with the descriptive term “swimwear,” and adds the generic top-level domain (“gTLD”) “.net.” Previous panels have found that the addition of a term related to complainant’s business and the removal of a punctuation mark are insufficient to distinguish the mark from the disputed domain name. Earlier panels have also determined that the removal of a letter from a complainant’s mark, along with the removal of spaces and the addition of a gTLD render the disputed domain name confusingly similar to a complainant’s mark. See 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 L’Oreal 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).
Therefore, this Panel finds that Respondent’s <victoriasecretswimwear.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <victoriasecretswimwear.net> domain name. Previous panels have found that when a complainant makes a prima facie case to support its allegations, the burden shifts to the respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant makes a prima facie case here. Given Respondent’s failure to respond, the Panel may find that Respondent does not have rights or legitimate interests in the <victoriasecretswimwear.net> 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 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).
However, this Panel still examines the record to determine if evidence there suggests that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not authorized to use the VICTORIA’S SECRET mark. The WHOIS information identifies the domain name registrant as “Sea Goddess Swimwear.” No other evidence in the record suggests that Respondent is commonly known by the <victoriasecretswimwear.net> domain name. Because no indication in the record is set forth to show that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent has not established any rights or legitimate interests in the <victoriasecretswimwear.net> domain name pursuant to a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Further, Respondent uses the <victoriasecretswimwear.net> domain name to offer swimwear and apparel that seeks to directly compete with Complainant. The Panel finds that this competing use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Respondent has no rights or legitimate interests in the dispute domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the <victoriasecretswimwear.net> domain name in direct competition with Complainant. Respondent uses the disputed domain name to misdirect Internet users who are seeking Complainant’s official website to his own site where he offers competing products. The Panel finds that such use constitutes a disruption of Complainant’s business and supports findings of bad faith registration and use under a Policy ¶ 4(b)(iii) analysis. 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent also attempts to commercially gain by creating confusion with the <victoriasecretswimwear.net> domain name that is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Internet users are likely to be misled as to some connection or sponsorship by the Complainant that does not exist with the disputed domain name. The Panel finds that Respondent’s attempt to commercially gain by its creation of confusion is in bad faith pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Respondent registered and used the disputed domain name 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 <victoriasecretswimwear.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 25, 2010.
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