Victoria's Secret Stores Brand Management, Inc. v. Secret By Victorias c/o Sandra Oliveira
Claim Number: FA1102001371257
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 Secret By Victorias c/o Sandra Oliveira (“Respondent”), Paraguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <secretbyvictorias.com>, registered with eNom.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2011; the National Arbitration Forum received payment on February 4, 2011.
On February 4, 2011, eNom confirmed by e-mail to the National Arbitration Forum that the <secretbyvictorias.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom 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 February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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@secretbyvictorias.com. Also on February 4, 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 March 2, 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 owns the VICTORIA’S SECRET trademark, which it uses in connection with the marketing of women’s lingerie and other apparel, as well as personal care and beauty products, swimwear, outerwear and gift cards.
Complainant has registered its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”), registry No. 1,146,199, issued January 20, 1981.
Respondent registered the disputed domain name on January 17, 2008.
The disputed domain name redirects Internet users to a Portuguese-language website entitled “Secret by Moment’s”, which offers for sale a variety of personal care products, clothing and accessories purporting to be VICTORIA’S SECRET merchandise, as well as merchandise from a variety of competing brands.
The resolving website also prominently displays the VICTORIA’S SECRET mark and a copyrighted VICTORIA’S SECRET promotional photograph.
Respondent’s <secretbyvictorias.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not affiliated with Complainant, and Respondent has not been licensed or otherwise permitted to use the VICTORIA’S SECRET mark in a domain name, nor is Respondent an authorized dealer, importer or reseller of VICTORIA’S SECRET products.
Respondent is not commonly known by the disputed domain name.
Respondent does not have any rights to or legitimate interests in the domain name <secretbyvictorias.com>.
Respondent registered and uses the <secretbyvictorias.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 a 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 rights in its VICTORIA’S SECRET trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding that a complainant had registered its mark with national trademark authorities, and that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world).
Respondent’s <secretbyvictorias.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name inverts the terms in Complainant’s mark, removes the apostrophe, and adds the generic term “by” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark in forming the contested domain name do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the <channelplayboy.com> domain name confusingly similar to the mark THE PLAYBOY CHANNEL); see also Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003):
Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.
Similarly, the addition of a generic term to Complainant’s mark in forming the disputed domain name is not sufficient to distinguish the two under the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name there in dispute contained the identical mark of a complainant combined with a generic word or term); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that a respondent’s domain names were confusingly similar to a complainant’s GOOGLE mark where that respondent merely added common terms such as “buy” or “gear” to the end of the mark in creating the contested domain name). Finally, the removal of the apostrophe and the addition of a gTLD do not distinguish the disputed domain name from Complainant’s mark. See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003):
The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.
See also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that Respondent’s <secretbyvictorias.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark pursuant to Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), the burden of persuasion shifts to Respondent to prove that it does have rights to or legitimate interests in its contested domain name, once Complainant has made out a prima facie case in support of its allegations under this head 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 [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case on the point of Respondent’s rights to or interests in the contested domain name. Owing to Respondent’s failure to respond to the Complaint filed in this proceeding, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to a complaint filed under the Policy can be construed as an admission that it has no legitimate interest in disputed domain names). Nevertheless, we will examine the record before us, in light of the considerations contained 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 disputed domain name which are cognizable under the Policy.
We first consider that Complainant argues, and Respondent does not deny, that Respondent is not affiliated with Complainant, and that Respondent has not been licensed or permitted to use the VICTORIA’S SECRET mark in a domain name, that Respondent is not an authorized dealer, importer or reseller of VICTORIA’S SECRET products, and that Respondent is not commonly known by the disputed domain name. Moreover, where, as here, there appears to be some association between the disputed domain name and the registrant listed in the pertinent WHOIS information, a respondent will not be found to be commonly known by a disputed domain name without corroborating evidence in the record. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although a respondent listed itself as “AIM Profiles” in the relevant WHOIS contact information, there was no other evidence in the record to suggest that that respondent was actually commonly known by the contested domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004): (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Therefore, 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 disputed domain name pursuant to Policy ¶ 4(c)(ii).
We also note that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website that sells personal care products, clothing and accessories, some of which purport to be VICTORIA’S SECRET merchandise. Respondent’s use of the disputed domain name in the manner alleged is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use for purposes of Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights to or legitimate interests in the <pitneybowe.com> domain name where a respondent purported to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of that complainant); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell a complainant’s goods without that complainant’s authority, as well as others’ goods, is not bona fide use).
It is also undisputed on this record that Respondent has prominently displayed on its resolving website Complainant’s VICTORIA’S SECRET mark and a copyrighted VICTORIA’S SECRET photograph. This is a plain attempt by Respondent to pass itself off as Complainant, and further demonstrates Respondent’s lack of rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent attempted to pass itself off as a complainant online in a blatant unauthorized use of that complainant’s mark, which evidenced that that respondent had no rights to or legitimate interests in the disputed domain name); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding that a respondent’s use of a disputed domain name to pass itself off as a complainant in order to market unauthorized products of that complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that the proof requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s registration and use of the disputed domain name to redirect Internet users seeking Complainant’s products to Respondent’s site, which offers for sale what are purported to be Complainant’s goods as well as competing goods, constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring to a complainant the <fossilwatch.com> domain name, where a respondent was a watch dealer not authorized to sell a complainant’s goods,); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001):
Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its … equipment.
It is also evident that Respondent intends to benefit commercially from its use of the disputed domain name in the fashion alleged in the Complaint. This it does by creating a likelihood of confusion with Complainant as a possible source, sponsor, affiliate or endorser of the resolving website. This demonstrates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that a respondent came within Policy ¶ 4(b)(iv) by creating a likelihood of confusion with a complainant's mark by using a domain identical to that complainant’s mark to sell that complainant’s products); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that a respondent registered and used a domain name in bad faith where the domain resolved to a website that was likely to confuse a complainant’s potential customers because of that respondent’s prominent use of that complainant’s logo on the site).
Finally, the website resolving from Respondent’s domain name displays Complainant’s VICTORIA’S SECRET mark and a copyright-protected image. Respondent is thus attempting to pass itself off as Complainant, demonstrating its bad faith registration and use of the domain pursuant to Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that a complainant endorsed and sponsored a respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because a respondent registered a domain name containing a complainant’s TARGET mark, and “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
For these reasons, the Panel 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 <secretbyvictorias.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard , Panelist
Dated: March 3, 2011
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