national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Afis Yusuf

Claim Number: FA1009001349515

 

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 Afis Yusuf ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretfurniture.com>, registered with Wild West Domains, 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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010; the National Arbitration Forum received payment on October 1, 2010.

 

On September 30, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretfurniture.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name.  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 October 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@victoriasecretfurniture.com.  Also on October 4, 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 November 3, 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.

 

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 <victoriasecretfurniture.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 <victoriasecretfurniture.com> domain name.

 

3.      Respondent registered and used the <victoriasecretfurniture.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., operates a company specializing in women’s lingerie and other apparel, personal care, beauty products, and swimwear.  Complainant registered its trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, Afis Yusuf, registered the <victoriasecretfurniture.com> domain name on January 30, 2010.  The disputed domain name resolves to a website featuring pictures of furniture and a contact number that Internet users can call to purchase the furniture. 

 

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 contends it has established rights in the VICTORIA’S SECRET mark.  Previous panels have concluded that registration with a federal authority is sufficient to establish rights in a mark.  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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).  Complainant has multiple trademark registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981), which leads the Panel to conclude that Complainant’s trademark registration of its VICTORIA’S SECRET mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). 

 

Complainant alleges that Respondent’s <victoriasecretfurniture.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The disputed domain name incorporates most of Complainant’s VICTORIA’S SECRET mark adds the generic term “furniture” and the generic top-level domain (“gTLD”) “.com.”  The addition of a generic term and gTLD fail to distinguish Respondent’s domain name from Complainant’s mark.  See 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).  Additionally, Complainant alleges that the removal of the “s” letter and apostrophe from Complainant’s VICTORIA’S SECRET mark fails to distinguish Respondent’s <victoriasecretfurniture.com> domain name.  Complainant also contends that the removal of the space between the terms in Complainant’s mark still renders the domain name confusingly similar.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also 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 Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).  Accordingly, the Panel concludes that Respondent’s <victoriasecretfurniture.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

Complainant contends Respondent lacks rights and legitimate interests in the <victoriasecretfurniture.com> domain name.  Previous panels have found that a complainant making a prima facie showing in support of its allegations shifts the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that it does not have rights or legitimate interests in the <victoriasecretfurniture.com> domain name.  However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <victoriasecretfurniture.com> domain name under Policy ¶ 4(c).  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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant asserts that Respondent is not commonly known by the <victoriasecretfurniture.com> domain name.  Respondent has not alleged any evidence supporting a finding that it is known by the disputed domain name.  The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “Afis Yusuf,” which Complainant argues is not similar to the disputed domain name.  Complainant further alleges that is has not authorized or licensed Respondent to use its VICTORIA’S SECRET mark.  Therefore, pursuant to Policy ¶ 4(c)(ii), the Panel finds that Respondent is not commonly known by the <victoriasecretfurniture.com> domain name.  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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The disputed <victoriasecretfurniture.com> domain name resolves to a website offering services unrelated to Complainant’s clothing business.  Respondent’s resolving website displays pictures of furniture and posts a telephone number for Internet users to call to purchase the furniture posted on the website.  Complainant alleges Respondent financially benefits from this use of the disputed domain name.  The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a unrelated website featuring Respondent’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(ii).  See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).

    

The Panel finds Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent uses Complainant’s VICTORIA’S SECRET mark to redirect Internet users to Respondent’s <victoriasecretfurniture.com> domain name and resolving furniture website for commercial gain.  Complainant alleges that Internet users seeking Respondent’s domain name are confused as to Complainant’s sponsorship of or affiliation with Respondent’s resolving website.  The Panel finds that such use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website).   

 

The Panel finds that 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 <victoriasecretfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  November 5, 2010

 

 

 

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