Victoria's Secret Stores Brand Management, Inc. v. 500dollarvictoriasecretgiftcar
Claim Number: FA 1359979
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 500dollarvictoriasecretgiftcar (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <500dollarvictoriasecretgiftcard.com>, registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 22, 2010; the National Arbitration Forum received payment on November 24, 2010.
On November 23, 2010, MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <500dollarvictoriasecretgiftcard.com> domain name is registered with MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. D/B/A INTERNET NAMES WORLDWIDE 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@500dollarvictoriasecretgiftcard.com. Also on November 24, 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 20, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the VICTORIA’S SECRET trademark, and has continually used the mark since 1977 for the promotion and sale of its women’s lingerie, beauty products, swimwear, outerwear, and gift cards.
Complainant’s uses the VICTORIA’S SECRET mark in connection with its retail stores and online market.
Complainant holds trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the <500dollarvictoriasecretgiftcard.com> domain name on August 17, 2010.
The disputed domain name resolves to a website at <giftrewardzone.com>, which purports to offer a $500 Victoria’s Secret gift card in exchange for providing personal information and participating in a series of offers from businesses unrelated to Complainant.
Respondent’s <500dollarvictoriasecretgiftcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the <500dollarvictoriasecretgiftcard.com> domain name.
Complainant has not authorized or licensed Respondent to use its VICTORIA SECRET mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <500dollarvictoriasecretgiftcard.com>.
Respondent registered and uses the <500dollarvictoriasecretgiftcard.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its VICTORIA’S SECRET mark for purposes of the Policy by means of its uncontested national trademark registrations. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).
Respondent’s <500dollarvictoriasecretgiftcard.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name incorporates complainant’s mark in its entirety, merely deleting an apostrophe, the letter “s” and the space between words of the mark, then adding the generic words, “dollar” and “gift card,” the number “500” and the generic top-level domain (“gTLD”) “.com.” These changes do not sufficiently differentiate the disputed domain name from Complainant’s mark. 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.
As to the deletion of the letter “s”, this alteration of the mark in forming the contested domain name also fails to distinguish the disputed domain name. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent simply omitted the letter “i”).
Similarly, the addition of generic words or numbers does not distinguish the disputed domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated that complainant’s entire mark and merely added two generic terms to it); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name was confusingly similar to the OMNITEL trademark).
Finally, the addition of a gTLD to Complainant’s mark in forming the disputed domain name does not differentiate the disputed domain name from the mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Therefore, the Panel concludes that Respondent’s disputed domain name <500dollarvictoriasecretgiftcard.com> is confusingly similar to Complainant’s VICTORIA SECRET mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent does not have rights to or legitimate interests in the <500dollarvictoriasecretgiftcard.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), a panel concluded that a:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Here Complainant has presented such a prima facie case, while Respondent has neglected to respond to the Complaint. Therefore we Panel may presume that Respondent lacks rights and legitimate interests in its contested domain name under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that a respondent had no rights to or legitimate interests in a disputed domain name because that respondent never submitted a response to a complaint filed under the Policy).
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant argues, and Respondent does not deny, that Respondent is not commonly known by the <500dollarvictoriasecretgiftcard.com> domain name, and that Complainant has not authorized or licensed Respondent to use its VICTORIA SECRET mark in the disputed domain name. Moreover, although the WHOIS information for the contested domain identifies the registrant as “500dollarvictoriasecretgiftcar,” this falls short of proving that Respondent is commonly known by the disputed domain name. For this reason, and in light of the evidence submitted by Complainant, we must conclude that Respondent is not commonly known by the disputed domain name so as to have established that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that a respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in the pertinent WHOIS contact information, there was no other evidence in the record to suggest that that respondent was commonly known by a contested domain name).
We also note that there is no dispute as to Complainant’s assertion that Respondent’s domain name resolves to a third-party website, <giftcardrewardzone.com>, which purports to offer a gift card in exchange for personal information. In the circumstances here presented, we may comfortably presume that Respondent benefits financially from the receipt of referral fees for each Internet user who visits the resolving website. Respondent’s use of the disputed domain name in this manner is not 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 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).
To the same effect, see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
The disputed domain name redirects Internet users to a third-party website which purports to offer a gift card from Complainant in exchange for disclosure of personal information. Internet users may become confused regarding the possibility of Complainant’s sponsorship of, or affiliation with, the disputed domain name, resolving website, and solicited information. Respondent presumably attempts to profit from this confusion by receiving referral or click-through fees. Respondent’s use of the <500dollarvictoriasecretgiftcard.com> domain name as described is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent was diverting to its own website Internet users searching for the website of a complainant, and likely profiting in the process); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for a respondent’s commercial gain).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <500dollarvictoriasecretgiftcard.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 3, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page