Victoria’s Secret Stores Brand Management, Inc. v. Arjuna Estrada
Claim Number: FA1012001364746
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 Arjuna Estrada (“Respondent”), Nicaragua.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretnicaragua.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2010; the National Arbitration Forum received payment on December 27, 2010.
On December 22, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretnicaragua.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 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 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@victoriasecretnicaragua.com. Also on December 28, 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 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecretnicaragua.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 <victoriasecretnicaragua.com> domain name.
3. Respondent registered and used the <victoriasecretnicaragua.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear in more than 1,000 retail stores throughout the United States and online. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) and with the Nicaraguan Industrial Property Register (“NIPR”):
USPTO
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995;
Reg. No. 2,455,260 issued May 29, 2001;
Reg. No. 3,480,533 issued August 5, 2008; and
NIPR
Reg. No. 27,812 issued March 2, 1995.
Respondent, Arjuna Estrada, registered the <victoriasecretnicaragua.com> domain name on September 30, 2009. The disputed domain name resolves to a commercial website offering what are purported to be Complainant’s products and displaying numerous images of Complainant’s products and even a video of Complainant’s fashion show.
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 owns multiple trademark registrations for the VICTORIA’S SECRET mark with the USPTO and the NIPR:
USPTO
Reg. No. 1,146,199 issued January 20, 1981;
Reg. No. 1,908,042 issued August 1, 1995;
Reg. No. 2,455,260 issued May 29, 2001;
Reg. No. 3,480,533 issued August 5, 2008; and
NIPR
Reg. No. 27,812 issued March 2, 1995.
The Panel finds that trademark registrations with the trademark authorities of the United States and Nicaragua provide sufficient proof to establish Complainant’s rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); 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 argues that Respondent’s <victoriasecretnicaragua.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain name is comprised of a misspelled version of Complainant’s mark that deletes the letter “s,” the apostrophe, and the space between terms combined with the geographic term “nicaragua” and the generic top-level domain name (“gTLD”) “.com.” The Panel finds that adding a geographic term does nothing to alleviate the confusing similarity between Complainant’s mark and the disputed domain name. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the deletion of the apostrophe has no effect on preventing a finding of confusing similarity. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); 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). The Panel additionally concludes that misspelling Complainant’s mark by deleting a single letter does not distinguish the disputed domain name. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Finally, the Panel holds that the deletion of a space between terms and the addition of a gTLD are irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Thus, the Panel finds that Respondent’s <victoriasecretnicaragua.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests, Policy ¶ 4(a)(ii) places the burden on Complainant to put forth a prima facie case against Respondent. Since the Panel has found that Complainant has met this burden, the burden to show rights and legitimate interests now shifts to Respondent. By defaulting, however, Respondent has not contested Complainant’s allegations and the Panel concludes that Respondent has not shown any rights and legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). In the interest of fairness, however, the Panel elects to consider all the evidence in the record in light of the Policy ¶ 4(c) factors.
Complainant argues that Respondent is not affiliated with Complainant and has not been licensed or permitted the use Complainant’s VICTORIA’S SECRET mark in the <victoriasecretnicaragua.com> domain name. Complainant further asserts that Respondent’s resolving website is not affiliated with or endorsed by Complainant and Respondent is not an authorized dealer, importer or reseller of Complainant’s products in Nicaragua or anywhere else. The WHOIS information for the disputed domain name lists the registrant as “Arjuna Estrada,” which shows no affiliation with the disputed domain name. The Panel thus concludes that Respondent is not commonly known by the <victoriasecretnicaragua.com> domain name and accordingly lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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 contends that Respondent’s website resolving from the <victoriasecretnicaragua.com> domain name offers products purported to be Complainant’s for sale. Complainant alleges that the website allows consumers to order goods online or by telephone, as well as make an appointment to have products brought to their home or workplace. The Panel finds that commercially using Complainant’s misappropriated mark in the disputed domain name to sell products purported to be Complainant’s does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to 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).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent uses the <victoriasecretnicaragua.com> domain name to direct Complainant’s intending customers to Respondent’s own commercial website, which purports to sell Complainant’s products. As Respondent is not authorized to sell Complainant’s products, Complainant argues that this use of the disputed domain name disrupts Complainants business and facilitates competition with Complainant. As a result, the Panel finds that Respondent’s activities in connection with the <victoriasecretnicaragua.com> domain name reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent uses Complainant’s VICTORIA’S SECRET mark in the <victoriasecretnicaragua.com> domain name in order to attract Internet users seeking Complainant and Complainant’s products. Complainant argues that Respondent uses Complainant’s mark, product images, and the video of its fashion show to create a likelihood of confusion and create the impression that Respondent is an authorized seller of Complainant’s products. As Respondent uses Complainant’s intellectual property in connection with a commercial website, Complainant argues that Respondent intends to profit from the fame and goodwill associated with Complainant’s mark. The Panel accordingly finds that Respondent’s misuse of Complainant’s mark and images for commercial gain indicates bad faith registration and use 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretnicaragua.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 24, 2011
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