Victoria's Secret Stores Brand Management, Inc. v. Andres Martinez
Claim Number: FA1012001363111
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 Andres Martinez (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretcreditcard.net>, 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 13, 2010; the National Arbitration Forum received payment on December 14, 2010.
On December 14, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretcreditcard.net> 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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2011 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@victoriasecretcreditcard.net. Also on December 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 regular 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 January 10, 2011, 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.
Complainant has used its VICTORIA’S SECRET mark since 1977 in connection with the retail marketing of women’s lingerie and other apparel, including swimwear, outerwear, and beauty care products.
Complainant holds a trademark registration for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the disputed <victoriasecretcreditcard.net> domain name on August 7, 2010.
Respondent previously used the disputed domain name to redirect Internet users to a website which advertised third-party businesses unrelated to Complainant and posted an article purportedly about Complainant’s credit card services.
The disputed domain name does not currently resolve to an active site.
Respondent’s <victoriasecretcreditcard.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the <victoriasecretcreditcard.net> domain name, and Complainant has not licensed or otherwise permitted Respondent to use its VICTORIA’S SECRET mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <victoriasecretcreditcard.net>.
Respondent registered and uses the disputed <victoriasecretcreditcard.net> 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 its VICTORIA’S SECRET mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <victoriasecretcreditcard.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark. The disputed domain name incorporates Complainant’s entire mark and differs through the deletion of the space between the words of the work, the deletion of an apostrophe and the letter “s”, and the addition of the generic words “credit” and “card” and the generic top-level domain (“gTLD”) “.net.” The deletion of a space between words of a mark, the elimination of punctuation, and an added gTLD are not enough properly to distinguish the disputed domain name from Complainant’s mark. See 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).
Similarly, the elimination of a single letter fails to differentiate the disputed domain name from Complainant’s mark under the standards applied by the Policy. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
Finally, the addition of the generic words “credit” and “card” which do not sufficiently distinguish the disputed domain name from Complainant’s mark, particularly where, as here, those generic terms are descriptive of an element of Complainant’s business. See, for example, 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 Complainant’s entire mark and merely added two generic terms to it).
Therefore, the Panel concludes that Respondent’s <victoriasecretcreditcard.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i).
Complainant maintains that Respondent has no rights to or legitimate interests in the <victoriasecretcreditcard.net> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel determined that once a complainant has made out a prima facie case in support of its allegations, the burden shifts to a respondent to show that it does have rights to or legitimate interests in a contested domain name. We agree with this proposition. Here, Complainant has established prima facie that Respondent lacks rights to and legitimate interests in the contested domain name. Given Respondent’s failure to submit a response to the Complaint, we are therefore free to presume that Respondent has no rights to or legitimate interests in its domain. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate rights to or legitimate interests in a contested domain name). 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 contested 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 <victoriasecretcreditcard.net> domain name, and that Complainant has not licensed or otherwise permitted Respondent to use its VICTORIA’S SECRET mark in the disputed domain name. Moreover, the pertinent WHOIS information identifies Respondent only as “Andres Martinez,” which is not similar to the disputed domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domains, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also, for example, M. Shanken Commc’ns v. WORLDTRAVELERS-ONLINE.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).
We also note that Complainant alleges, without objection from Respondent, that Respondent previously used the disputed domain name to redirect Internet users to a website which advertised third-party businesses unrelated to Complainant and posted an article purportedly about Complainant’s credit card services. Respondent’s use of the disputed domain name to advertise businesses unrelated to Complainant and display misleading information is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain under Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that a 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 a respondent had no rights to or legitimate interests in a contested domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii) where it used the disputed domain name to operate a website featuring links to goods and services unrelated to the business of a complainant).
In addition, it is uncontested on this record that Respondent is currently using the <victoriasecretcreditcard.net> domain name to resolve to an inactive website. Respondent’s current inactive use of the disputed domain name is further evidence that Respondent lacks rights to and legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
See also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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 the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent previously used the <victoriasecretcreditcard.net> domain name to redirect Internet users to a website which advertised businesses and products unrelated to Complainant’s women’s apparel business. In the circumstances here presented, we may comfortably presume that Respondent received click-through fees from the visits of Internet users to these links. Respondent’s use of the contested domain name, which is confusingly similar to Complainant’s mark, in this manner will have caused confusion among Internet users regarding the possibility of Complainant’s sponsorship of or affiliation with the disputed domain name, resolving website, and related advertisements. Respondent attempted to profit from this confusion through the receipt of click-through fees. This use of the disputed domain name is evidence of its bad faith registration and use 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 diverted Internet users searching for a complainant’s website to its own website, likely profiting in the process); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with a complainant because a respondent was using a domain name which was confusingly similar to a competing mark to redirect Internet users to a website with links to websites unrelated to that complainant, and likely receiving click-through fees in the process).
Respondent currently uses the <victoriasecretcreditcard.net> domain name to host an inactive website. Its failure to make active use of the disputed domain name is further evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <victoriasecretcreditcard.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 24, 2011
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