Victoria's Secret Stores Brand Management, Inc. v. Project Helium LLC
Claim Number: FA1009001347557
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 Project Helium LLC ("Respondent"), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretreviews.com>, registered with Wild West Domains, 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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2010; the National Arbitration Forum received payment on September 21, 2010.
On September 23, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretreviews.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 14, 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@victoriassecretreviews.com. Also on September 24, 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.
A timely Response was received and determined to be complete on October 12, 2010.
A timely “Additional Statement” was submitted by Complainant on October 15, 2010.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Victoria’s Secret Stores Brand Management (VSSBM) is an indirect wholly owned subsidiary of Limited Brands, Inc. Complainant uses the VICTORIA’S SECRET mark in connection with its more than 1,000 retail stores located throughout the U.S., as well as on the merchandise found at such stores, including women’s lingerie and personal care and beauty products. The mark was first used at least as early as June 12, 1977. In 2009, nearly $5 billion of merchandise was sold bearing the VICTORIA’S SECRET mark.
VSSBM owns a number of U.S. trademark registrations for marks that incorporate the mark VICTORIA’S SECRET, in whole or in part. See Complaint, Exhibit D. It also owns the domain name <victoriassecret.com>, from which it offers for sale its VICTORIA’S SECRET merchandise, including cosmetics products. The domain name was registered by Complainant on January 23, 1995. See Complaint, Exhibit C.
Complainant asserts that the disputed domain name, <victoriassecretreviews.com>, which was registered on October 30, 2006, is confusingly similar to Complainant’s VICTORIA’S SECRET mark insofar as it incorporates the mark in its entirety and merely adds the generic word “reviews” to the mark.
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant notes that the disputed domain name purports to offer “reviews” on lingerie, bras, underwear, sleepwear, cosmetics, and fragrances but that all but one of the “reviews” are dated in 2007. Respondent’s website, according to Complainant, features advertising for various businesses, most of which are unrelated to Respondent and some of which offer competing goods. See Complaint, Exhibits E and F.
On information and belief, Complainant maintains that the “reviews” are simply intended to draw traffic to Respondent’s site. Complainant observes that Respondent’s site displays a picture of a VICTORIA’S SECRET gift card which links to a web page at <consumergiftcards.com>. This latter site purports to offer a $500 Victoria’s Secret gift card in return for providing private contact information and completing a series of sponsor offers from businesses unrelated to Complainant.
Complainant further indicates that Respondent’s site at <victoriassecretreviews.com> also displays ads for “MAC Cosmetics.” The ads link to a web page at the URL <sokissandmakeup.com/mac-cosmetics/>, which also displays extensive advertising for various businesses while purporting to offer information about MAC Cosmetics. These businesses include those that compete with Complainant. See Complaint, Exhibit G. On information and belief, Complainant asserts that Respondent benefits commercially from the site through pay-per-click advertising fees or in some other manner.
Complainant contends that it is not affiliated with Respondent, nor has it licensed or permitted the use of the VICTORIA’S SECRET marks in domain names. On information and belief, Complainant also asserts that Respondent is not commonly known by the domain name and also asserts that Respondent is not making a legitimate noncommercial or fair use of the domain name. “The Site’s inclusion of advertising for third parties takes it out of the realm of fair use,” Complainant argues.
With respect to the issue of “bad faith” registration and use, Complainant contends, on information and belief, that Respondent registered the domain name with the intent to attract internet users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or affiliation of the domain name and the site, thereby misleadingly diverting internet traffic from Complainant’s website for commercial gain. According to Complainant, “[g]iven the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark.”
B. Respondent
In its Response, Respondent indicates that the subject domain was not meant to appear to be owned by, operated by, or affiliated with Complainant. Respondent asserts that the look and feel of its site is such that it would be obvious that it was not affiliated with Victoria’s Secret. Rather, it is a personal blog that provides personal reviews of a few products.
Respondent asserts that the site was built about five or six years ago with the sole purpose of helping Respondent’s authorized representative, Elizabeth Jackson, learn how to code html. Respondent declares that the domain was not registered or used in bad faith, that no goods or services were ever sold on the site and that it is willing to sell the domain name to Complainant; indeed, according to Respondent, the site has been taken down.
C. Additional Submissions
In its “Additional Statement,” Complainant labels as “disingenuous at best” Respondent’s assertion that the domain name was registered in order to help Respondent’s authorized representative learn to code html.
In response to Respondent’s contention that it would be willing to take the challenged site down, Complainant notes that its counsel sent a “cease and desist” letter to Respondent on May 18, 2010. See Additional Statement, Exhibit 2. Respondent did not respond to the letter. Further, Complainant notes, even if Respondent took down the site, nothing prevents it from re-establishing a commercial site at the domain name unless the domain name is transferred to Complainant.
The Panel finds that: (1) the disputed domain name is confusingly similar to the mark VICTORIA’S SECRET; (2) Complainant has rights in the mark VICTORIA’S SECRET; (3) Respondent has no rights or legitimate interests in the domain name; and (4) the domain name was registered and is being used in bad faith.
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."
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.
The Panel further concludes that Complainant, through its ownership of trademark registrations for marks that include, in whole or in part, the term “VICTORIA’S SECRET,” as well as its longstanding and extensive use of such mark, has rights in the mark.
The key issue under this element of the Policy is whether it may be held that Respondent is making a fair use of the subject domain name. Respondent contends that the site was built for the sole purpose of helping Respondent’s authorized representative to learn how to code html and that the domain was kept as a personal blog to write reviews of her favorite VICTORIA’S SECRET products.
The Panel determines that Respondent’s use of the domain name does not qualify as a “fair use” under the Policy. The Panel agrees with Complainant that it was unnecessary for Respondent to register the subject domain name, which incorporates Complainant’s well-known mark, in order to learn html code.
While the use of a domain name solely for purposes of posting reviews of a product may constitute fair use (see Estate of Jennings v. Submachine, D2001-1042 (WIPO Oct. 25, 2001), the evidence indicates that Respondent’s site includes, in addition to reviews of VICTORIA’S SECRET products, information regarding, and links to, sites, some of which offer products that compete with those offered by Complainant, as well as information regarding the purchase of a Victoria’s Secret gift card. This mixture of commercial links with product reviews negates the argument of fair use. See Richard Dawkins v. J. Gabriel, FA 1317157 (Nat. Arb. Forum, May 21, 2010 (no fair use where domain name was used both in connection with fan site and as link to sites having nothing to do with author Richard Dawkins.) It also defeats any claim that the domain name is being used in connection with a bona fide offering of goods and services. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (use of complainant’s mark to market products that compete with complainant’s goods does not constitute a bona fide offering of goods and services.)
There also is no evidence that Respondent is commonly known by the domain name or that Complainant authorized Respondent’s use of “Victoria’s Secret.”
Thus, the Panel concludes that Complainant has sustained its burden of proving that Respondent has no rights or legitimate interests in the domain name.
The Panel determines that the domain name in issue was registered and is being used in bad faith. Given the relative fame of Complainant’s VICTORIA’S SECRET mark and the use of the domain name in connection with a site that offers links to commercial products, it is more likely than not that Respondent registered the domain name with the intent to attract internet users to Respondent’s site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, or affiliation of the site and/or of the goods or services offered at, or through, such site. [1]
Respondent’s failure to respond to Complainant’s counsel’s May 18, 2010 cease and desist is further evidence of the requisite “bad faith” registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretreviews.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: November 5, 2010
[1] Even if the Panel was to credit Respondent’s argument that no goods were ever sold on the site, such fact does not compel a conclusion that Respondent’s site was not being used for commercial gain.
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