Victoria's Secret Stores Brand Management, Inc. v. Giorgi Chanturia
Claim Number: FA1012001362189
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 Giorgi Chanturia (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretprintablecoupons.com>, registered with GoDaddy.com, Inc.
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 December 7, 2010; the National Arbitration Forum received payment on December 8, 2010.
On December 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretprintablecoupons.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@victoriasecretprintablecoupons.com. Also on December 8, 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 30, 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 owns the exclusive rights to its VICTORIA’S SECRET trademark.
Complainant uses the mark in connection with its retail, manufacture and design business specializing in lingerie, swimwear, apparel and beauty products.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (including Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the <victoriasecretprintablecoupons.com> domain name on November 9, 2010.
The disputed domain name resolves to a website which features Complainant’s mark, images from Complainant’s official website and links to other commercial websites, some of which compete with Complainant’s business.
Respondent’s <victoriasecretprintablecoupons.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the domain name, either as a business, individual, or other organization.
Respondent has not been licensed or permitted to use the VICTORIA’S SECRET mark in domain names, on any web site, or in any other manner.
Respondent does not have any rights or legitimate interests in the domain name <victoriasecretprintablecoupons.com>.
Respondent registered and used the <victoriasecretprintablecoupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 the VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):
As the [complainant’s] mark is registered with the USPTO, complainant has met the requirements of Policy ¶ 4(a)(i).
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).
Respondent’s <victoriasecretprintablecoupons.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark. The disputed domain name removes the space and the apostrophe from Complainant’s mark, and adds the generic terms “printable” and “coupons” together with the generic top-level domain (“gTLD”) “.com.” Because spaces and punctuation are not reproducible in a domain name, these changes do nothing to distinguish 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.
Similarly, adding generic terms to a mark, along with a gTLD, does not avoid a finding of confusing similarity with a contested domain. 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 terms to it). See also 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 finds that Respondent’s <victoriasecretprintablecoupons.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <victoriasecretprintablecoupons.com> domain name. Once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the subject domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
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.
Complainant has made out such a prima facie case. Owing to Respondent’s lack of a response to the Complaint, we are free to infer that Respondent does not have rights to or legitimate interests in the <victoriasecretprintablecoupons.com> domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). 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 sufficient to satisfy the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the subject domain name, either as a business, individual, or other organization, and that Respondent is not affiliated with Complainant, nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET mark in domain names, on any web site, or in any other manner. Moreover, the WHOIS information for the contested domain name indicates that the registrant is “Giorgi Chanturia,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the domain name <victoriasecretprintablecoupons.com> so as to have demonstrated that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name).
We also observe that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to display images of Complainant’s business alongside commercial links, some of which redirect Internet users to web sites that compete with the business of Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits in the form of click-through fees from the visits of Internet users to the websites resolving from the sponsored links. This use of the contested domain name does 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a contested domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if whether a respondent is itself profiting commercially from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent evidently uses the <victoriasecretprintablecoupons.com> domain name to display pay-per-click links, some of which resolve to websites that are in competition with Complainant’s business, and from which Respondent likely profits. The registration and use of the contested domain name for this purpose constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain names to operate a search engine with links to the websites offering products of a complainant and that complainant’s commercial competitors, as well as by diverting Internet users to several other domain names).
Respondent not only displays Complainant’s VICTORIA’S SECRET mark on its <victoriasecretprintablecoupons.com> domain, but also features images evidently copied from Complainant’s official website. Internet users likely reach Respondent’s website when in search of Complainant’s and may become confused as to the possibility of Complainant’s sponsorship of the resolving website. Respondent likely profits from this confusion when Internet users utilize the pay-per-click links displayed at the disputed domain. This use of the domain constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
See also 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, likely profiting in the process).
The Panel thus 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 <victoriasecretprintablecoupons.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 12, 2011
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