Victoria’s Secret Stores Brand Management, Inc. v. Private Whois Service
Claim Number: FA 1357485
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 Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <colinstuart.org>, <colinstuartshoes.net> and <colinstuartshoes.org>, registered with Internet.bs Corp.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2010; the National Arbitration Forum received payment on November 10, 2010.
On November 10, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <colinstuart.org>, <colinstuartshoes.net> and <colinstuartshoes.org> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@colinstuart.org, postmaster@colinstuartshoes.net, postmaster@colinstuartshoes.org. Also on November 12, 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 7, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <colinstuart.org>, <colinstuartshoes.net> and <colinstuartshoes.org> domain names are confusingly similar to Complainant’s COLIN STUART mark.
2. Respondent does not have any rights or legitimate interests in the <colinstuart.org>, <colinstuartshoes.net>, <colinstuartshoes.org> domain names.
3. Respondent registered and used the <colinstuart.org>, <colinstuartshoes.net>, <colinstuartshoes.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., owns the COLIN STUART mark. Complainant has used its COLIN STUART mark since 1992 in connection with its brand of footwear sold through Complainant’s Victoria’s Secret catalogue and website. Complainant holds a trademark registration for its COLIN STUART mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,875,990 issued January 24, 1995).
Respondent registered the disputed domain names <colinstuart.org> and <colinstuartshoes.org> on May 4, 2010 and <colinstuartshoes.net> on March 9, 2010. The disputed domain names resolves to a website which sells shoes in direct competition with Complainant’s footwear business.
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 asserts that it has established rights in its COLIN STUART mark. Previous panels have found that registration with a federal trademark authority is sufficient to establish rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel finds that it is not necessary for Complainant to register its mark within the country of Respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant holds a trademark registration of its COLIN STUART mark with the USPTO (e.g. Reg. No. 1,875,990 issued January 24, 1995). Therefore, the Panel concludes that Complainant has established rights in its COLIN STUART mark through its trademark registration with a federal trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s COLIN STUART mark. The disputed domain names wholly incorporate Complainant’s mark while removing the space between the terms. Respondent’s <colinstuartshoes.net> and <colinstuartshoes.org> include the addition of the descriptive term “shoes.” All of Respondent’s disputed domain names add the generic top-level domain (“gTLD”) “.org” or “.net.” The Panel finds that the removal of a space in Complainant’s mark is not sufficient to distinguish the disputed domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel finds that the addition of a descriptive term is not sufficient to distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel also finds that the addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s COLIN STUART mark pursuant to Policy ¶ 4(a)(i)
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that once complainant establishes a prima facie showing in support of its allegations, the burden then shifts to the respondent to prove that it does have rights or legitimate interests. 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.”). Complainant has established a prima facie showing. Respondent did not respond to the Complaint, therefore the Panel may assume that Respondent has no rights and legitimate interests pursuant to Policy ¶4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names. The WHOIS information is not similar to the disputed domain names. Complainant asserts it has not authorized or licensed Respondent to use or register its COLIN STUART mark in the disputed domain names. The Panel finds no additional evidence in the record indicating that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed 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).
Respondent uses the disputed domain names to resolve to a website featuring links to Complainant’s competitors in the footwear industry and links which redirect users to third-party sites selling what are purported to be COLIN STUART shoes. Respondent likely receives click-through fees from these links. The Panel concludes that Respondent’s use of the confusingly similar disputed domain names is not 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). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s use of the disputed domain names disrupts its business. Respondent uses the disputed domain names to operate a website featuring links to third-party site in direct competition with Complainant’s shoe business. Internet users searching for Complainant’s goods may instead find Respondent’s website and purchase similar products from Complainant’s competitors as a result of Respondent’s use of the confusingly similar domain names. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s business, which constitutes bad faith use and registration under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent likely receives click-through fees from the previously mentioned third-party links. Internet users searching out the products of Complainant may be redirected to Respondent’s resolving website. Given Respondent’s use of the confusingly similar disputed domain names, Internet users may become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain names, resolving website, and products offered by third-party links. Respondent benefits commercially from this confusion through the receipt of click-through fees. The Panel concludes that Respondent’s use of the disputed domain names is additional evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <colinstuart.org>, <colinstuartshoes.net>, <colinstuartshoes.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 20, 2010
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