national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Above.com Domain Privacy

Claim Number: FA1358247

 

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 Above.com Pty Ltd. (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <cvictoriassecret.com> and <gvictoriassecret.com> registered with ABOVE.COM PTY LTD.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2010; the National Arbitration Forum received payment on November 15, 2010.

 

On November 15, 2010, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <cvictoriassecret.com> and < gvictoriassecret.com> domain names are registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the names.  ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@cvictoriassecret.com and postmaster@ gvictoriassecret.com.  Also on November 16, 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 8, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cvictoriassecret.com> and <gvictoriassecret.com> domain name are confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cvictoriassecret.com>and <gvictoriassecret.com> domain names.

 

3.      Respondent registered and used the <cvictoriassecret.com> and <gvictoriassecret.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Victoria's Secret Stores Brand Management, Inc., has used its VICTORIA’S SECRET mark since 1977 in connection with the sale of women’s lingerie and other apparel through its retail stores, mail order catalogue, and online market.  Complainant holds numerous trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, Above.com Pty Ltd., registered the disputed domain name <cvictoriassecret.com> on July 13, 2010 and the <gvictoriassecret.com> disputed domain name on July 14, 2010.  The disputed domain names resolves to website featuring a directory of hyperlinks to commercial sites, some of which directly compete with Complainant’s women’s apparel business.

 

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 its VICTORIA’S SECRET mark.  Previous panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  The Panel finds that it is not necessary for Complainant to register its mark within the country of Respondent. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).  Complainant holds numerous trademark registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981).  Thus, the Panel concludes that Complainant has established rights in its VICTORIA’S SECRET mark through trademark registration pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The disputed domain names incorporate Complainant’s mark as a whole and varies from the mark only by the deletion of an apostrophe, the addition of a single letter “g” or “c”, the deletion of a space between the words of the mark, and the addition of the generic top level domain (“gTLD”) “.com.”  The Panel finds that the deletion of the apostrophe fails to properly distinguish the disputed domain names from Complainant’s mark.  See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).  The Panel also finds that the addition of a single letter does not sufficiently distinguish the disputed domain names from Complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).  Additionally, the Panel finds that the deletion of a space and the addition of a gTLD does not sufficiently differentiate the disputed domain names from Complainant’s mark. 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).  Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel found that 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.”  Here, Complainant has established a prima facie showing in support of its allegations.  Respondent failed to respond to the Complaint, therefore the Panel may assume that Respondent does not have rights or legitimate interests under Policy ¶ 4(a)(ii).  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).  However, the Panel will turn to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleges that Respondent is not commonly known by the disputed domain names.  Nothing in the WHOIS information indicates that Respondent is commonly known by the disputed domain names. Complainant  asserts that it has not authorized or licensed Respondent to use or register its VICTORIA’S SECRET mark in the disputed domain names.  Nor does the Panel find any additional evidence in the record that would provide a basis for determining that Respondent is commonly known by the disputed domain names.  The Panel concludes that Respondent is not commonly known by the disputed domain names 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).

 

Respondent’s disputed domain names resolve to websites which host a directory of third-party links to commercial sites, some of which compete with Complainant in the women’s apparel industry.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain names to host websites attempting to redirect Internet users to Complainant’s competitors 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 ¶(c)(iii).  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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)).

 

Respondent’s disputed domain names include Complainant’s whole mark and simply add the letter “g” or “c” which are adjacent to the letter “v” from “Victoria” on a standard keyboard and replicates a common typographical error.  Complainant argues that the typographical errors in the disputed domain names take advantage of Internet users who make common typing mistakes by rerouting users to Respondent’s websites.  The Panel concludes that Respondent’s use of the disputed domain names indicates that Respondent lack rights and legitimate interests under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the disputed domain names disrupts its business.  Internet users intending to purchase women’s apparel and goods from Complainant may be redirected to Respondent’s website due to Respondent’s use of the disputed domain names and purchase similar products from Complainant’s competitor as a result.  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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); 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 receives click-through fees from the previously mentioned third-party links.  Respondent uses the disputed domain names to operate a directory website with third-party links, some of which compete with Complainant’s women’s apparel business.  Internet users searching for Complainant may instead find Respondent’s website and due to Respondent’s use of confusingly similar disputed domain names may become confused as to Complainant’s association with, or sponsorship of, the disputed domain names, resolving websites, and third-party links.  Respondent tries to capitalize off this confusion by receiving click-through fees.  The Panel concludes that Respondent’s use of the disputed domain names is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  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)(iv) 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 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).

 

As established previously, Respondent has engaged in the practice of typosquatting.  The Panel concludes that Respondent’s behavior is additional evidence of bad faith use and registration under Policy ¶ 4(a)(iii).  See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

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 <cvictoriassecret.com> and < gvictoriassecret.com> domain names be TRANSFERRED from Respondent to Complainant.

 

                                                                                                 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  December 16, 2010

 

 

 

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