Victoria’s Secret Stores Brand Management, Inc. v. Sueli Maria Silva Carmargo
Claim Number: FA 1358912
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 Sueli Maria Silva Carmargo (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lojavictoriassecrets.com>, registered with UNIVERSO ONLINE S/A (UOL).
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 17, 2010; the National Arbitration Forum received payment on November 18, 2010. The Complaint was submitted in both Portuguese and English.
On November 22, 2010, UNIVERSO ONLINE S/A (UOL) confirmed by e-mail to the National Arbitration Forum that the <lojavictoriassecrets.com> domain name is registered with UNIVERSO ONLINE S/A (UOL) and that Respondent is the current registrant of the names. UNIVERSO ONLINE S/A (UOL) has verified that Respondent is bound by the UNIVERSO ONLINE S/A (UOL) 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 23, 2010, the Forum served the Portuguese language Complaint and all Annexes, including a Portuguese language Written Notice of the Complaint, setting a deadline of December 13, 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@lojavictoriassecrets.com. Also on November 23, 2010, the Portuguese language 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 15, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Portuguese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lojavictoriassecrets.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 <lojavictoriassecrets.com> domain name.
3. Respondent registered and used the <lojavictoriassecrets.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 registered owner of multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) and Brazil’s Instituto Nacional Da Propriedade Industrial (“INPI”) for its VICTORIA’S SECRET family of marks:
USPTO
VICTORIA’S SECRET 1,146,199 Jan. 20, 1981
VICTORIA’S SECRET 1,908,042 Aug. 1, 1995
VICTORIA’S SECRET HOME 2,994,208 Sep. 13, 2005
VICTORIA’S SECRET GARDEN 3,013,385 Nov. 8, 2005
VICTORIA’S SECRET PINK 3,226,760 Apr. 10, 2007
VICTORIA’S SECRET SPA 3,426,643 May 13, 2008
VICTORIA’S SECRET 3,480,533 Aug. 5, 2008
VICTORIA’S SECRET ANGELS 3,670,768 Aug. 18, 2009
VICTORIA’S SECRET SPORT 3,693,125 Oct. 6, 2009
INPI
VICTORIA’S SECRET 5053919 July 10, 1986
Complainant uses its VICTORIA’S SECRET mark in connection with the sale of women’s lingerie, clothing, cosmetics, and personal care products.
Respondent, Sueli Maria Silva Carmargo, registered the disputed domain name on May 21, 2010. The disputed domain name resolves to a website that purportedly sells Complainant’s products and that prominently features the VICTORIA’S SECRET mark and images of Complainant’s products. The resolving website also offers for sale products from Complainant’s competitors.
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 claims rights in its VICTORIA’S SECRET mark based on its extensive registration of the mark with both the USPTO and Brazil’s INPI:
USPTO
VICTORIA’S SECRET 1,146,199 Jan. 20, 1981
VICTORIA’S SECRET 1,908,042 Aug. 1, 1995
VICTORIA’S SECRET HOME 2,994,208 Sep. 13, 2005
VICTORIA’S SECRET GARDEN 3,013,385 Nov. 8, 2005
VICTORIA’S SECRET PINK 3,226,760 Apr. 10, 2007
VICTORIA’S SECRET SPA 3,426,643 May 13, 2008
VICTORIA’S SECRET 3,480,533 Aug. 5, 2008
VICTORIA’S SECRET ANGELS 3,670,768 Aug. 18, 2009
VICTORIA’S SECRET SPORT 3,693,125 Oct. 6, 2009
INPI
VICTORIA’S SECRET 5053919 July 10, 1986
The Panel finds that Complainant’s longstanding and extensive registration of its VICTORIA’S SECRET mark with governmental trademark authorities is conclusive evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See 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); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <lojavictoriassecrets.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name makes only the following minor modifications to Complainant’s mark: 1) adds the generic term “loja” (which is Spanish for “store”); 2) removes the apostrophe from Complainant’s mark; 3) eliminates the space between the terms in Complainant’s mark; 4) adds an additional letter “s” to the end of Complainant’s mark; and 5) appends the generic top-level domain (“gTLD”) “.com.” The Panel finds that none of these alterations, either separately or taken together, are sufficient to adequately distinguish the disputed domain name from Complainant’s mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN 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); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel can conclude that based on the above cited precedent, Respondent’s <lojavictoriassecrets.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Pursuant to the requirements of Policy ¶ 4(a)(ii), once Complainant makes a prima facie case in support of its allegations, the burden properly shifts to Respondent to demonstrate its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case. The Panel notes that Respondent’s failure to submit a Response to these proceedings allow them to infer that Respondent does in fact lack rights and legitimate interests in the disputed domain name as Complainant contends. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel elects to make a complete determination as to Respondent’s rights and legitimate interests in the disputed domain name by examining the record with respect to the Policy ¶ 4(c) factors.
Complainant argues that Respondent is not affiliated with Complainant nor has Respondent been licensed or permitted to use Complainant’s VICTORIA’S SECRET mark in a domain name, on a website, or in any other manner. Complainant also argues that Respondent is not an authorized dealer, importer, or reseller of Complainant’s VICTORIA’S SECRET products in Brazil or anywhere else. The WHOIS information for the disputed domain name lists “Sueli Maria Silva Carmargo” as the registrant of the disputed domain name. The Panel concludes that, based on the above information, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also 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).
Complainant alleges that Respondent’s disputed domain name resolves to a website that purports to sell Complainant’s products along with the products of Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name to sell Complainant’s products, and those of Complainant’s competitors, is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s disputed domain name redirects Internet users seeking Complainant’s products from Complainant’s website to Respondent’s resolving website, which purports to sell Complainant’s products as well as goods that compete with Complainant’s, constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). The Panel is inclined to agree and finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant presumes, and the Panel agrees, that Respondent benefits commercially from the website resolving from the disputed domain name, likely through the sale of Complainant’s products and the products of Complainant’s competitors. Complainant argues, and the Panel again agrees, that Respondent registered the disputed domain name with the intent to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s disputed domain name and the resolving website. Therefore, the Panel supports a finding of bad faith under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
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 <lojavictoriassecrets.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 22, 2010
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