Victoria’s Secret Stores Brand Management, Inc. v. Private Whois Service
Claim Number: FA1012001365129
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 Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secretvictorias.biz>, registered with INTERNET.BS CORP.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2010; the National Arbitration Forum received payment on December 27, 2010.
On December 28, 2010, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <secretvictorias.biz> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS 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 29, 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@secretvictorias.biz. Also on December 29, 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 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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, 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:
1. Respondent’s <secretvictorias.biz> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <secretvictorias.biz> domain name.
3. Respondent registered and used the <secretvictorias.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is the owner of the VICTORIA’S SECRET mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981). Complainant uses the mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards.
Respondent registered the disputed domain name on June 24, 2010. The disputed domain name resolves to a website entitled “Victoria’s Secret Online” and displays unauthorized Victoria’s Secret videos. The resolving website also contains links and advertisements to third party sites, some of which compete with Complainant.
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 asserts rights in its VICTORIA’S SECRET mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981). The Panel finds that Complainant’s registration of its VICTORIA’S SECRET mark establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also finds that it is unnecessary for Complainant to have registered the mark in the country where Respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <secretvictorias.biz> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name merely removes the apostrophe and the space between the terms, transposes the terms “victoria’s” and “secret,” and adds the generic top-level domain (“gTLD”) “.biz.” The Panel finds that the removal of the apostrophe and the space between the terms of Complainant’s mark does not distinguish the disputed domain name. 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.”). The Panel also finds that the transposition of two terms is not sufficient to avoid a finding of confusing similarity. See Bloomberg L.P. v. Herrington Hart, NIRT, FA 464790 (Nat. Arb. Forum June 1, 2005) (“The Panel finds that the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”). Finally, the Panel concludes that the addition of a gTLD is irrelevant for the purpose of determining confusing similarity. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Therefore, the Panel determines that the disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant must first make a prima facie case in support of its allegations that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Based on the allegations contained in the Complaint, the Panel finds that Complainant has established a prima facie case. The Panel also infers that Respondent’s failure to submit a Response is additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will evaluate the evidence on record to determine if Respondent has rights or legitimate interests in the disputed domain names according to Policy ¶ 4(c).
Complainant asserts that Respondent is not affiliated with Complainant nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET mark in a domain name, on any website, or in any other manner. Complainant also asserts that Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization. Nothing in the WHOIS information for the disputed domain name allows the Panel to find that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent lacks rights and 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 the 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent’s disputed domain name resolves to a website entitled “Victoria’s Secret Online” and displays unauthorized Victoria’s Secret videos, as well as links and advertisements to third party sites, some of which compete with Complainant. The Panel finds that Respondent’s use of the disputed domain name for this purpose is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed 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).”).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent registered and is using the disputed domain name in an attempt to disrupt Complainant’s business. Internet users who are looking for information regarding Complainant’s products and services may instead find Respondent’s resolving website with links and advertisements to Complainant’s competitors. The Panel finds that this does indeed disrupt Complainant’s business and is therefore evidence of Respondent’s bad faith registration and use pursuant to 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 confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent commercially benefits based on its use of the disputed domain name. Complainant further asserts that Respondent likely registered the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain name. The Panel finds that this likelihood of confusion is likely heightened by Respondent’s inclusion of the title “Victoria’s Secret Online” and also unauthorized Victoria’s Secret videos. Therefore, the Panel finds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <secretvictorias.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Coourt, NY (Ret.)
Dated: January 25, 2011
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