Victoria’s Secret Stores Brand Management, Inc. v. Jerau Adderley
Claim Number: FA1102001372246
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 Jerau Adderley (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretonamazon.com>, registered with eNom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2011; the National Arbitration Forum received payment on February 10, 2011.
On February 10, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretonamazon.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 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@victoriassecretonamazon.com. Also on February 11, 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 9, 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 <victoriassecretonamazon.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 <victoriassecretonamazon.com> domain name.
3. Respondent registered and used the <victoriassecretonamazon.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, outwear and gift cards in retail stores, through its mail-order catalogue, and online. Complainant owns multiple VICTORIA’S SECRET trademark registrations with the United States Patent and Trademark Office (“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; and
Reg. No. 3,480,533 issued August 5, 2008.
Respondent, Jerau Adderley, registered the <victoriassecretonamazon.com> domain name on September 16, 2010. The disputed domain name resolves to a website entitled “Victoria’s Secret: All your Victoria’s Secret needs,” which advertises women’s clothing and other merchandise for sale and then redirects Internet users to Amazon.com sales pages. Some of the products advertised are purportedly Complainant’s products, but the majority are from competing brands.
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 VICTORIA’S SECRET trademark registrations with the 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; and
Reg. No. 3,480,533 issued August 5, 2008.
The Panel holds that USPTO trademark registrations are substantive evidence showing Complainant’s rights in the VICTORIA’S SECRET mark according to Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“The Panel finds that Complainant has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”). The Panel also finds that the lack of a trademark registration in the Bahamas, Respondent’s country of residence or business operations, does not affect Complainant’s rights in the mark. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <victoriassecretonamazon.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain name only makes the following insubstantial modifications to Complainant’s mark: deleting the apostrophe and space between the terms, adding the generic terms “on” and “amazon,” and attaching the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the removal of an apostrophe nor the space between terms alleviates confusing similarity 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 U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel also determines that the addition of generic terms is not a distinguishing alteration under the Policy. See 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)); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). Finally, the Panel holds that attaching a gTLD does nothing to change the essential character of Complainant’s mark. See 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.”). The Panel accordingly finds that Respondent’s <victoriassecretonamazon.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
The Panel thus finds that Policy ¶ 4(a)(i) has been satisfied.
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must put forth a prima facie case in alleging Respondent’s lack of rights and legitimate interests before the burden to present evidence refuting this allegation transfers to Respondent. The Panel finds that in the instant proceeding, Complainant has satisfied its burden, thereby shifting responsibility to Respondent to demonstrate its rights and legitimate interests. Respondent has defaulted, however, and thus has not shown any evidence of rights and legitimate interests. The Panel accordingly infers that Complainant’s allegations may be accepted as true in that Respondent does not possess rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). The Panel will examine the evidence in light of the Policy ¶ 4(c) factors, however, to make its own determination on Respondent’s rights and legitimate interests.
Complainant argues that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark on any website or in any domain name. Complainant asserts that neither Respondent’s resolving website nor the Amazon.com sales pages to which Respondent’s advertisements lead are endorsed by Complainant. The WHOIS information for the <victoriassecretonamazon.com> domain name indicates that the registrant is “Jerau Adderly,” a name with no apparent connection to the disputed domain name. The Panel thus holds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Complainant alleges that Respondent uses the <victoriassecretonamazon.com> domain name to advertise products and apparel, including some purporting to be Complainant’s products, and then redirect Internet users to Amazon.com sales web pages where the advertised products can be purchased. Complainant argues that Respondent engages in this advertising and redirection presumably for commercial gain. The Panel holds that such an unauthorized commercial use of Complainant’s mark for Respondent’s profit does not satisfy the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) as it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent redirects Internet users seeking Complainant’s products to Respondent’s own website advertising competing apparel and goods through the confusingly similar <victoriassecretonamazon.com> domain name. As some of the goods are purported to be Complainant’s and others are competing brands, Complainant alleges that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting customers away from Complainant. The Panel holds that this activity indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant alleges that Respondent intentionally uses Complainant’s VICTORIA’S SECRET mark in the <victoriassecretonamazon.com> domain name in order to create a likelihood of confusion between Complainant and Respondent. Complainant argues that Respondent aims to drive traffic to its resolving website as a result of this confusion and thereby increase its commercial gain. The Panel finds this behavior reveals bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <victoriassecretonamazon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 9, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page