Victoria's Secret Stores Brand Management, Inc. v. Bruno Spinelli
Claim Number: FA1355523
Complainant is Victoria Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington D.C., USA. Respondent is Bruno Spinelli (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecret-brasil.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2010; the National Arbitration Forum received payment on October 29, 2010.
On November 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-brasil.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@victoriassecret-brasil.com. Also on November 3, 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 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <victoriassecret-brasil.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 <victoriassecret-brasil.com> domain name.
3. Respondent registered and used the <victoriassecret-brasil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., is the United States record owner of VICTORIA’S SECRET trademarks and service marks. Complainant holds such trademarks and services marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No.1,146,199 issued January 1, 1981). Complainant itself is a subsidiary of Limited Brands, Inc. and licenses the mark to other subsidiaries. Other subsidiaries market women’s lingerie, personal products, beauty products, swimwear, outerwear, and numerous other products under the VICTORIA’S SECRET mark.
Respondent, Bruno Spinelli, registered the disputed domain name, <victoriassecret‑brasil.com>, on April 22, 2010. At the time of Complaint, the disputed domain name resolved to a links page offering goods both similar and non-similar to the goods offered under Complainant’s mark. For the purposes of this decision this website will be referred to as the “current” website. Respondent’s website previously resolved to a website offering various body care products. For the purposes of this decision this will be referred to as the “previous” website.
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’s trademark registrations with the USPTO (e.g., Reg. No.1,146,199 issued January 1, 1981) sufficiently establish rights in the VICTORIA’S SECRET mark under 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The Panel also finds that the disputed domain name <victoriassecret-brasil.com> is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Respondent’s domain wholly incorporates Complainant’s mark with only a few other non-distinguishing additions. Respondent’s complete incorporation weighs heavily in favor of finding the domain name confusingly similar to the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Respondent’s addition of the hyphen and removal of the apostrophe fail to distinguish the domain name from the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); 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). The addition of the term “brasil” does not distinguish the domain name either. “Brasil” is the Portuguese spelling of the country Brazil. Therefore, the Panel presumes that the term “brasil” is being used as a geographic indicator. Previous panels have concluded that the use of geographic terms, even one considering “brasil” specifically, fail to distinguish a domain from a pre-existing mark. See Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Finally, the addition of the generic-top-level domain “.com” fails to add any distinction. See 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). For the reasons above, the Panel finds that Respondent’s <victoriassecret-brasil.com> domain name is confusingly similar to the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <victoriassecret-brasil.com> domain name. The burden shifts to Respondent to prove that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <victoriassecret‑brasil.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name does not provide any indication that Respondent is commonly known by the domain name. Respondent has not provided the Panel with any evidence to the contrary either. The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ (c)(ii).
The Panel finds that Respondent’s use of the disputed domain name, in both the current and previous form, to divert Internet users for the purpose of marketing, both competing and unrelated, products is neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The current website resolves to a links page containing links to competing and non-competing goods. The previous website resolved to a page that sold directly competing goods. Both current and previous sites diverted users for profit. This type of diversion for profit is an indication that the disputed domain name’s use is neither a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); 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).”).
Finding that the evidence indicates that Respondent is not commonly known by the domain name and is using the domain to divert Internet users, the Panel finds that Policy ¶ 4(a)(ii) is met.
The Panel finds that both the current website and the previous website disrupt the use of Complainant’s mark. The current website offers links to sites that sell goods that compete with Complainant’s mark. The previous site sold goods that directly competed with the goods that are sold under the VICTORIA’S SECRET mark. The Panel finds this disruption is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business); 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).
The Panel also finds that Respondent is using the disputed domain name to attract users to its websites for commercial gain. Respondent has chosen a domain name confusingly similar to Complainant’s mark. The Panel presumes Respondent has chosen this domain name because Internet users seeking the web presence of the VICTORIA’S SECRET market will accidently stumble upon Respondent’s domain name and become confused as to Complainant’s affiliation with the disputed domain name. The Panel also presumes that Respondent directly benefits from this either through click-through fees, in the current website, or through direct sales, in the previous website. The attraction of Internet users using a confusingly similar domain name for profit indicates the presence of a bad faith registration and use pursuant to 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 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)).
Based upon Respondent’s disruption pursuant to Policy ¶ 4(b)(iii) and attraction pursuant to Policy ¶ 4(b)(iv), the Panel finds Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecret-brasil.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 4, 2010
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