national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. Purple Bucquet / Purple

Claim Number: FA1012001363116

 

PARTIES

Complainant is Victoria’s Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington D.C., USA.  Respondent is Purple Bucquet / Purple (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pinkvictoriassecret.com>, registered with Power Brand Center Corp.

 

PANEL

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.

 

PROCEDURAL HISTORY

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, Power Brand Center Corp confirmed by e-mail to the National Arbitration Forum that the <pinkvictoriassecret.com> domain name is registered with Power Brand Center Corp and that Respondent is the current registrant of the name.  Power Brand Center Corp has verified that Respondent is bound by the Power Brand Center Corp 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@pinkvictoriassecret.com.  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 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant owns the VICTORIA’S SECRET PINK trademark. 

 

Complainant has been in the business of marketing women’s lingerie and apparel since 1977, and has used its VICTORIA’S SECRET PINK mark since 2001 for the promotion of its line targeted to college-aged women. 

 

Complainant holds a trademark registration for its VICTORIA’S SECRET PINK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,820,380, issued March 2, 2004). 

 

Respondent registered the <pinkvictoriassecret.com> domain name on August 24, 2006. 

 

The disputed domain name resolves to a website which promises free gift cards for Complainant’s stores in return for providing personal contact information and completing sponsor offers from businesses unrelated to Complainant.

 

Respondent’s <pinkvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark.

 

Respondent is not commonly known by the <pinkvictoriassecret.com> domain name.

Respondent is not affiliated with Complainant and has not been licensed or permitted to use its VICTORIA’S SECRET PINK mark in the disputed domain name. 

 

Respondent does not have any rights to or legitimate interests in the domain name <pinkvictoriassecret.com>.

 

Respondent registered and uses the disputed <pinkvictoriassecret.com> domain name in bad faith.

 

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

 

FINDINGS

(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.

 

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 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.

 

 

Identical and/or Confusingly Similar

 

Complainant has established rights in its VICTORIA’S SECRET PINK trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, in this instance the USPTO.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), in which a panel found that a complainant had established rights to the MILLER TIME mark through its national trademark registrations. 

 

Complainant is not required to register its mark within the country of residence of Respondent.  See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, only that it can establish such rights in some jurisdiction).  Here, Complainant has a trademark registration of its VICTORIA’S SECRET PINK mark with the USPTO.  This is sufficient for purposes of the Policy. 

 

Respondent’s <pinkvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark.  The disputed domain name incorporates Complainant’s entire mark and differs by inverting the words of the mark, deleting the apostrophe and the spaces between the words, and by adding the generic top-level domain (“gTLD”) “.com.”  The inversion of terms in a mark in forming the contested domain name does not distinguish the domain from Complainant’s mark sufficiently to avoid a finding of confusing similarity.  See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the <nationalrentalcar.com> domain name confusingly similar to the mark NATIONAL CAR RENTAL and holding that:

 

merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other.

 

Similarly, the deletion of spaces and punctuation, and the addition of a gTLD fail 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).

 

Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark under Policy ¶ 4(a)(i).

 

 

 

Rights or Legitimate Interests

 

Complainant argues that Respondent lacks rights to and legitimate interests in the <pinkvictoriassecret.com> domain name.  Previous panels have found that once a complainant establishes a prima facie showing in support of its allegations on this point, the burden shifts to a respondent to demonstrate that it nonetheless has rights to or legitimate interests in its domain name which will satisfy the requirements of the Policy.   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 a prima facie showing in support of its argument that Respondent has no rights to or legitimate interests in the contested domain.  Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we are free to presume that Respondent has no rights to or legitimate interests in the domain.  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.

 

Nonetheless, we will examine the evidence of record, 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 noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <pinkvictoriassecret.com> domain name, and that Respondent is not affiliated with Complainant and has not been licensed or permitted to use its VICTORIA’S SECRET PINK mark in the disputed domain name.  Moreover, the pertinent WHOIS information identifies Respondent only as “Purple Bucquet,” which is not similar to the disputed domain name.  On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name);  see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the WHOIS information and other evidence in the record, that a respondent was not commonly known by the <cigaraficionada.com> domain name so as to have established that it had rights to or legitimate interests in the domain name there in dispute under Policy ¶ 4(c)(ii)).

 

We also observe  that there is no dispute on this record as to Complainant’s allegation that the <pinkvictoriassecret.com> domain name resolves to a website which offers gift cards for Complainant’s services in exchange for Internet users’ personal contact information or completion of sponsor offers from unrelated businesses.  In the circumstances here presented, we may comfortably presume that Respondent receives referral fees for diverting Internet users to 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 ¶ (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).

 

See also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s business, from which visits by Internet users that respondent presumably received referral fees, was not a bona fide offering of goods or services as contemplated by the Policy).

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

Respondent uses the <pinkvictoriassecret.com> domain name, which is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark, to redirect Internet users to a website offering purported gift cards for Complainant’s retail stores in exchange for personal contact information or completion of sponsor offers.  Internet users may thus become confused as to the possibility of Complainant’s sponsorship of the disputed domain name, resolving website, and gift card offers.  Respondent attempts to capitalize from this confusion through the receipt of referral fees.  Respondent’s use of the disputed domain name in this fashion constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that a respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking a complainant’s website to its own website for commercial gain where that respondent likely profited from this diversion scheme);  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 diverted Internet users searching for the website of a complainant to its own website, likely profiting in the process).

 

For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <pinkvictoriassecret.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  January 24, 2011

 

 

 

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