Victoria's Secret Stores Brand Management, Inc. v. A I S Supplier
Claim Number: FA1009001347013
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 A I S Supplier ("Respondent"), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretsexy.com>, registered with GoDaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2010; the National Arbitration Forum received payment on September 20, 2010.
On September 17, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretsexy.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@victoriasecretsexy.com. Also on September 21, 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 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. Respondent’s <victoriasecretsexy.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 <victoriasecretsexy.com> domain name.
3. Respondent registered and used the <victoriasecretsexy.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards in retail stores throughout the United States, as well as via its print mail order catalogue and its e-commerce website located at the <victoriassecret.com> domain name. Complainant owns numerous trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, A I S Supplier, registered the <victoriasecretsexy.com> domain name on June 17, 2010. The disputed domain name resolves to a website displaying adult-oriented material and links to adult-oriented websites.
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.
Complainant owns numerous trademark registrations for the VICTORIA’S SECRET mark with the USPTO:
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995; and
Reg. No. 3,480,533 issued August 5, 2008.
The Panel finds that Complainant’s USPTO trademark registrations are conclusive proof that Complainant has rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <victoriasecretsexy.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain name includes a misspelled version of Complainant’s mark that deletes the space between the terms, the apostrophe, and the letter “s.” Additionally, Respondent adds the descriptive term “sexy” and the generic top-level domain name (“gTLD”) “.com” to Complainant’s mark. The Panel finds that adding a descriptive term to Complainant’s mark does not change it sufficiently to avoid confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The Panel also finds that misspelling Complainant’s mark by omitting a single letter does not distinguish the disputed domain name from 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 Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). The Panel finds that the deletion of the space between terms and the apostrophe also fails to prevent confusing similarity under the Policy. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Finally, the Panel finds that the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel finds that Respondent’s <victoriasecretsexy.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. The Panel, however, elects to consider all the evidence in the record in light of the Policy ¶ 4(c) factors to assess whether Respondent has rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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.”).
Complainant argues that Respondent is not affiliated with Complainant and is not licensed or permitted to use the VICTORIA’S SECRET mark in domain names or in any other way. The WHOIS information for the <victoriasecretsexy.com> domain name lists the registrant as “A I S Supplier,” which indicates no affiliation between Respondent and the disputed domain name. The Panel accordingly finds that Complainant is not commonly known by the disputed domain name and thus lacks rights and legitimate interests according to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that Respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s <victoriasecretsexy.com> domain name resolves to a website displaying links for adult-oriented websites, including some entitled “Victoria Secret Sexy Shop,” “GenuineLoveStore.com,” “PornoPlenty.com,” “BringinSexyBackStore.com.” Complainant asserts that each landing page features a sexual content warning and an advertisement for “Adult Friend Finder,” which includes explicit photographs. Complainant contends that Respondent offers a service of setting up and operating websites selling adult-oriented products and therefore commercially benefits from its use of the disputed domain name by promoting websites it owns itself or operates for its customers. The Panel finds that neither using the disputed domain name to display links to unrelated websites nor using the disputed domain name to advertise adult-oriented material constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using its <victoriasecretsexy.com> domain name to drive Internet traffic seeking Complainant to a website featuring adult-oriented material and links to adult-oriented websites. Complainant alleges that Respondent registered the disputed domain name with the intent to trade on the goodwill of Complainant’s mark and attract Complainant’s intending customers. Complainant argues that Respondent’s use of Complainant’s mark aims to create a likelihood of confusion as to an affiliation between Respondent and Complainant for Respondent’s own commercial gain, as the websites advertised on the resolving page are presumably either owned by Complainant or operated by Complainant for Complainant’s customers. The Panel finds that Respondent’s registration and use of the <victoriasecretsexy.com> domain name demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant alleges that Respondent’s <victoriasecretsexy.com> domain name resolves to a website displaying adult-oriented images and links to adult-oriented websites. Complainant argues that the use of Complainant’s VICTORIA’S SECRET mark in connection with such a website tarnishes the reputation and goodwill associated with Complainant’s mark. The Panel therefore finds bad faith registration and use under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also 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)).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretsexy.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 29, 2010
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