Victoria’s Secret Stores Brand Management, Inc. v. Affiliano c/o Terence Kent
Claim Number: FA1011001356449
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 Affiliano c/o Terence Kent (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretcoupon.net>, registered with FASTDOMAIN, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 4, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcoupon.net> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the names. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@victoriassecretcoupon.net. Also on November 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 December 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <victoriassecretcoupon.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecretcoupon.net> domain name.
3. Respondent registered and used the <victoriassecretcoupon.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is a wholly own subsidiary of Limited Brands, Inc. Complainant is the record owner of the VICTORIA’S SECRET trademarks and service marks. Complainant has registered the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”), (e.g., Reg. No. 1,146,199 issued January 20, 1981), and South Africa’s Department of Trade and Industry (“DTI”) (Reg. No. 86/0772 issued February 7, 1986). Complainant licenses the marks to other subsidiaries of Limited Brands for use in connection with women’s lingerie, personal care, beauty products, swimwear, outerwear, and gift cards.
Respondent, Affiliano, registered the disputed domain name <victoriassecretcoupon.net> on June 8, 2010. The website resolves to a page containing articles regarding Complainant’s history covered by a pop-up add. The pop-up add must be closed or clicked before viewing the website. The pop-up add, as well as links on the website itself, link the viewer to a third-party website offering unrelated coupons.
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 alleges it has sufficient rights in the VICTORIA’S SECRET mark to pursue this claim. It evidences this by supplying the Panel with both the USPTO registration (e.g., Reg. No. 1,146,199 issued January 20, 1981) and the DTI registration (Reg. No. 86/0772 issued February 7, 1986). Either registration is sufficient to establish the necessary rights. Registration with any federal authority provides adequate evidence of rights. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Accordingly, the Panel finds that Complainant had established the necessary rights in its VICTORIA’S SECRET mark to proceed pursuant to Policy ¶ 4(a)(i).
The Panel also finds that Respondent’s domain name <victoriassecretcoupon.net> is confusingly similar to Complainant’s mark. The Panel is unconvinced that the minor differences and additions Respondent has altered the mark with are able to distinguish the domain name from the mark. The omission of the apostrophe and the space between the terms of Complainant’s mark is irrelevant as apostrophes and spaces are not able to be used in domain names. 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.”). The addition of the generic term “coupon” and the generic top-level domain (“gTLD”) “.net” also fail to distinguish the domain name because it is the addition of a generic term and gTLDs are required. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore the Panel finds that <victoriassecretcoupon.net> is confusingly similar to the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <victoriassecretcoupon.net> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed 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 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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name. Complainant points to the fact that the disputed domain name’s WHOIS information indicates that Respondent is known as “Affiliano.” Respondent has not supplied any evidence indicating that it is in fact known by <victoriassecretcoupon.net>. Previous panels have looked upon similar evidence and found that complainant was not commonly known by the disputed domain name at issue. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant also alleges that Respondent is lacking rights and legitimate interests in the mark. Respondent’s disputed domain name resolves to a website displaying an article about Complainant and a large pop-up advertisement that Internet users must click-through to access the website. The article the website purports to be is actually just a place holder for the same link. The Panel presumes that Respondent receives some sort of financial gain when Internet users are redirected via these tactics. The Panel find that this type of use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has satisfied the requirements of ¶ 4(a)(ii).
Complainant alleges that Respondent is using a confusingly similar domain name to attract users to its website for commercial gain. Respondent uses the confusingly similar <victoriassecretcoupon.net> to create confusion in Internet users as to the source of the website and its affiliation with Complainant. Through this use of a confusingly similar domain name, Respondent intends users to believe that it is offering coupons affiliated with Complainant. As discussed above, the Panel presumes Respondent receives some compensation for these actions. Previous panels have found that when a respondent intentionally uses a confusingly similar domain name to attract Internet users to its website for commercial gain the Respondent has registered and used the domain name in bad faith. 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 DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Therefore, the Panel finds this use to be an attraction for gain pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied 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 <victoriassecretcoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: December 9, 2010
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