Victoria's Secret Stores Brand Management, Inc. v. Crazy Events Domains c/o Rony Meyer
Claim Number: FA1101001369418
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 Crazy Events Domains c/o Rony Meyer (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretpics.info>, registered with Fabulous.com Pty Ltd. (R284-LRMS).
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 26, 2011, Fabulous.com Pty Ltd. (R284-LRMS) confirmed by e-mail to the National Arbitration Forum that the <victoriasecretpics.info> domain name is registered with Fabulous.com Pty Ltd. (R284-LRMS) and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. (R284-LRMS) has verified that Respondent is bound by the Fabulous.com Pty Ltd. (R284-LRMS) 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 January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 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@victoriasecretpics.info. Also on January 28, 2011, 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 February 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. 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 <victoriasecretpics.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretpics.info> domain name.
3. Respondent registered and used the <victoriasecretpics.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is large provider of clothing and accessory products for women, as well as personal and beauty care products. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981). Complainant uses this mark to support and sell its products.
Respondent, Crazy Events Domains c/o Rony Meyer, registered the <victoriasecretpics.info> domain name on January 27, 2007. The disputed domain name resolves to a site offering photos of celebrities along with links and pop-up advertisements for adult-oriented sites. Respondent presumably receives click-through fees from the linked adult-oriented sites and generates revenue from selling the adult-oriented advertisements.
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.
Previous panels have found that registering a mark with a federal trademark authority, including the USPTO, will establish a complainant’s rights in that mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] 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 the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Prior panels have also found that registration of the mark in Respondent’s country of residence is immaterial to the determination of Complainant’s rights in the mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant has provided certificates of registration for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981), which the Panel finds affirmatively establishes Complainant’s rights in that mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <victoriasecretpics.info> domain name is confusingly similar to its own VICTORIA’S SECRET mark. Respondent’s domain name includes almost the entire mark removing only an apostrophe and the letter “s,” while adding the generic top-level domain (“gTLD”) “.info,” and adding the generic term “pics.” The Panel finds that Respondent has not sufficiently differentiated its <victoriasecretpics.info> domain name from Complainant’s VICTORIA’S SECRET mark, making the two confusingly similar under Policy ¶ 4(a)(i). See 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); 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”); see also 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.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that the requirements of Policy ¶ 4(a)(i) have been satisfied.
The Panel finds that Complainant has made a prima facie case against Respondent showing that it lacks rights or legitimate interests in the mark. Respondent now has the burden of showing that it does in fact have rights or legitimate interests in the <victoriasecretpics.info> domain name. 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.”). However, the Panel may assume Respondent lacks any rights or legitimate interests in the disputed domain name due to Respondent’s failure to respond. 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.”). The Panel will still examine the entire record to determine whether Respondent does in fact retain rights or legitimate interests in the mark according to the factors listed in Policy ¶ 4(c).
The Panel finds that Respondent is not commonly known by the <victoriasecretpics.info> domain name. The WHOIS information is the only evidence in the record relating the Respondent to the disputed domain name and it identifies the registrant as “Crazy Events Domains/Rony Meyer,” which the Panel finds is not similar to the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <victoriasecretpics.info> domain name under Policy ¶ 4(c)(ii), based on the WHOIS information and the lack of evidence to the contrary. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The disputed domain name in this action resolves to a site offering photos of celebrities along with links and pop-up advertisements for adult-oriented sites. The Panel finds that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <victoriasecretpics.info> domain name. See Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with pornographic material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to pornographic material and links, while presumably earning a commission or referral fees from advertisers).
The Panel finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent presumably gains commercially by selling advertisements to adult-oriented sites and collecting click-through fees from the linked sites. Based on that presumption, the Panel finds that Respondent’s use of the <victoriasecretpics.info> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv) because, Respondent is commercially gaining from the disputed domain name. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under 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 the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Previous panels have found that using a confusingly similar domain name to offer links to and advertisements for adult-oriented material constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Jon-Don Prods., Inc. v. CarpetSolutions, FA 95293 (Nat. Arb. Forum Aug. 24, 2000) (finding bad faith where the respondent threatened to use the domain name for adult-oriented material); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith). Respondent uses the disputed domain name to offers links and advertisements for adult oriented material thereby constituting bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have 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 <victoriasecretpics.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 26, 2011
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