Victoria's Secret Stores Brand Management, Inc. v. Calbano Inc. c/o Chris Albano
Claim Number: FA1357519
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington D.C., USA. Respondent is Calbano Inc. c/o Chris Albano (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretpromo.com>, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 10, 2010.
On November 11, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretpromo.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. 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 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@victoriasecretpromo.com. 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 John J. Upchurch 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 <victoriasecretpromo.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 <victoriasecretpromo.com> domain name.
3. Respondent registered and used the <victoriasecretpromo.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 a clothing company specializing in women’s lingerie and other apparel, personal care and beauty products, and swimwear. Complainant operates more than 1,000 retail stores throughout the United States under its VICTORIA’S SECRET mark. Complainant registered its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).
Respondent, Chris Albano, registered the disputed domain name on January 1, 2009. The disputed domain name resolves to a website featuring hyperlinks to websites that are unrelated to Complainant’s clothing and swimwear 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 alleges it has established rights in the VICTORIA’S SECRET mark. Previous panels have concluded that registration with a federal trademark 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 Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark). 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). Therefore, the Panel concludes Complainant’s trademark registration of VICTORIA’S SECRET establishes rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <victoriasecretpromo.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name incorporates the majority of Complainant’s VICTORIA’S SECRET mark and adds the generic term “promo” and the generic top-level domain (“gTLD”) “.com.” The Panel concludes that the addition of a generic term and gTLD fails to distinguish Respondent’s domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); 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 fail to distinguish Respondent’s <victoriasecretpromo.com> domain name from Complainant’s established mark. Complainant also contends that the removal of the space between the terms in Complainant’s mark still renders the domain name confusingly similar to its mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Accordingly, the Panel concludes Respondent’s <victoriasecretpromo.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.
Pursuant to Policy ¶ 4(a)(ii), Complainant possesses the burden to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once a prima facie showing has been made by Complainant in support of its allegations, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). 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 Respondent lacks rights or legitimate interests in the <victoriasecretpromo.com> domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, pursuant to Policy ¶ 4(c), the Panel chooses to consider the evidence to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Respondent does not contest Complainant’s assertion that Respondent is not commonly known by the <victoriasecretpromo.com> domain name and that Respondent is not authorized to use the VICTORIA’S SECRET mark. The Panel can find no evidence in the record that would provide a solid foundation for determining that Respondent is commonly known by the disputed domain name. Additionally, “Chris Albano” is the name contained in the WHOIS database as the registrant of the disputed domain name which Complainant alleges is not similar to the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <victoriasecretpromo.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Complainant alleges that Respondent used the disputed domain name to redirect Internet users to Respondent’s website, which consists of links to the websites that are unrelated to Complainant’s clothing business. The Panel presumes that Respondent registered the disputed domain name to receive click-through fees in return for redirecting Internet traffic to unrelated third-party websites. The Panel finds that Respondent’s use of Complainant’s mark in a confusingly similar domain name to operate a website that is unrelated to Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant alleges that Respondent used the disputed domain name, which is confusingly similar to Complainant’s VICTORIA’S SECRET mark, to divert Internet users through hyperlinks to Respondent’s website. Because of this redirection, Complainant contends that Internet users are confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name’s resolving website and posted hyperlinks. Complainant alleges, and the Panel is in agreement, that Respondent benefits from this confusion through the receipt of click-through fees. Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretpromo.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 20, 2010
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