Victoria's Secret Stores Brand Management, Inc. v. ZhiGao Liu
Claim Number: FA1102001371813
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 ZhiGao Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <okcolinstuart.com>, registered with GoDaddy.com.
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 8, 2011; the National Arbitration Forum received payment on February 8, 2011.
On February 8, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <okcolinstuart.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@okcolinstuart.com. Also on February 9, 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 8, 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 is a marketer of women’s apparel and accessories.
Complainant holds a registration for its COLIN STUART trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,875,990, issued January 24, 1995).
Complainant uses the mark to support its business functions specifically related to the sale of footwear.
Respondent registered the <okcolinstuart.com> domain name on June 29, 2009.
The disputed domain name resolves to a site purportedly offering goods identical to Complainant’s products and bearing the COLIN STUART mark, which is prominently displayed on the site.
Respondent presumably receives revenue from the sale of goods from this site.
Respondent’s <okcolinstuart.com> domain name is confusingly similar to Complainant’s COLIN STUART mark.
Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the COLIN STUART trademark in a domain name, on any web site, or in any other manner.
Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization.
Respondent does not have any rights to or legitimate interests in the domain name <okcolinstuart.com>.
Respondent registered and uses the disputed <okcolinstuart.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(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.
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 established rights in its COLIN STUART trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations). This is true regardless of whether the mark is registered in Respondent’s country of residence. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <okcolinstuart.com> domain name is confusingly similar to Complainant’s COLIN STUART trademark. The disputed domain name incorporates the entire mark while adding the generic prefix “ok” and the generic top-level domain (“gTLD”) “.com,” while removing a space from the mark. These distinctions fail to differentiate the disputed domain name from Complainant’s COLIN STUART mark sufficiently, thus making the two confusingly similar under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to a complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”); 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.
See also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms of a mark in forming a domain name and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that the requirements of Policy ¶ 4(a)(i) have been met.
Policy ¶ 4(a)(ii) requires that Complainant make out a prima facie showing that Respondent has no rights to or legitimate interests in the contested domain name, whereupon the burden shifts to Respondent to show that it nonetheless has such rights or interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant under this head of the Policy, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name).
Complainant has met its burden of proof by making a prima facie showing that Respondent lacks rights to or legitimate interests in the contested domain name. The burden therefore has shifted to Respondent to go forward with a showing that it does have rights to or legitimate interests in the disputed domain name. Respondent has failed to file an answer to the Complaint filed in this proceeding. We are therefore free to presume that Respondent’s has no rights to or 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.
We will nevertheless examine the record before us, 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 disputed domain name which are cognizable under the Policy.
We first observe that Complainant alleges, and Respondent does not deny, that Respondent is not affiliated with Complainant, nor has Respondent been licensed or permitted to use the COLIN STUART trademark in a domain name, on any web site, or in any other manner, and that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information indicates that the registrant of the disputed domain is ZhiGao Liu, which does not resemble the contested domain. 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 pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a 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 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 WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next note that Complainant contends, without objection from Respondent, that Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the <okcolinstuart.com> domain name in that, presumably for Respondent’s profit, the disputed domain resolves to a website offering products identical to those sold by Complainant. Accordingly, we conclude that Respondent is not engaging in a bona fide offering of goods or services or making legitimate noncommercial or fair use of the <okcolinstuart.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that a respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with a complainant did not give rise to any legitimate interest in the domain name); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007):
The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing … services does not fall within the parameters of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.
Respondent’s use of the <okcolinstuart.com> domain name in the manner alleged in the Complaint disrupts Complainant’s business. This evidences bad faith registration and use of the disputed domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt that complainant’s business under Policy ¶ 4(b)(iii)).
That Respondent is apparently using the okcolinstuart.com> domain name for its commercial gain constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrated that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); 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 the <wwfauction.com> domain name in bad faith where the domain resolved to a website which was likely to confuse Internet users as to the possibility of a complainant’s affiliation with it because of the prominent use of that complainant’s logo on the website).
For these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have been met.
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 <okcolinstuart.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 11, 2011
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