national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. Guofeng Li

Claim Number: FA1102001372262

 

PARTIES

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 Guofeng Li (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoria-secret-underwear.info>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

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 11, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoria-secret-underwear.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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@victoria-secret-underwear.info.  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 10, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <victoria-secret-underwear.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 <victoria-secret-underwear.info> domain name.

 

3.    Respondent registered and used the <victoria-secret-underwear.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria’s Secret Stores Brand Management, Inc., is a retailer of women’s lingerie and apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) and the Chinese State Intellectual Property Office (“SIPO”) for the VICTORIA’S SECRET mark:

 

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.

 

SIPO

Reg. No. 1014220    issued May 28, 1997 and

Reg. No. 1505378    issued January 14, 2001.

 

Respondent, Guofeng Li, registered the <victoria-secret-underwear.info> domain name on August 27, 2010. The disputed domain name resolves to a  web page resembling a blog site but with content consisting of nearly incomprehensible phrases of keywords and links, many of which mention Complainant or Coach brand products.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns multiple trademark registrations with the USPTO and the Chinese SIPO for the VICTORIA’S SECRET mark:

 

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.

 

SIPO

Reg. No. 1014220    issued May 28, 1997 and

Reg. No. 1505378    issued January 14, 2001.

The Panel finds that these trademark registrations effectively support Complainant’s assertion of rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).

 

Complainant contends that Respondent’s <victoria-secret-underwear.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The only differences that Complainant alleges exist between the disputed domain name and its mark are the deletion of the letter “s” and the apostrophe from “victoria’s,” the insertion of two hyphens, and the addition of the descriptive term “underwear” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that deleting a letter from Complainant’s mark does not differentiate the disputed domain name. See 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 Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel also finds that differences in punctuation, such as the omission of apostrophes or the addition of hyphens, do not remove the disputed domain name from the realm of confusing similarity with Complainant’s mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy            ¶ 4(a)(i).”); see also 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.”). The Panel concludes that adding a descriptive term has no effect on preventing confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Finally, the Panel holds that the addition of the gTLD “.info” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel finds that Respondent’s <victoria-secret-underwear.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In order to shift the burden to show rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent. Although Complainant satisfied its burden in this regard, Respondent subsequently failed to prove any rights and legitimate interests in the disputed domain name because it defaulted and did not produce a Response. The Panel may therefore infer that Respondent does not possess rights and legitimate interests in the disputed domain name and that Complainant’s allegations may be accepted as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). The Panel will continue to analyze the information presented according to Policy ¶ 4(c) to reach a conclusion on Respondent’s rights and legitimate interests, however.

 

Complainant argues that Respondent is not commonly known by the <victoria-secret-underwear.info> domain name. Complainant asserts that Respondent has no affiliation and has not been licensed or permitted to use Complainant’s VICTORIA’S SECRET mark. Complainant argues that Respondent has never used the disputed domain name as a business, organization, or individual name. The WHOIS information for the disputed domain name lists the registrant as “Guofeng Li.” The Panel finds that no connection exists between the disputed domain name and Respondent, which is evidence supporting that Respondent is not commonly known by the disputed domain name. Consequently, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). 

 

Complainant alleges that Respondent’s <victoria-secret-underwear.info> domain name resolves to a web page resembling a blog that features incomprehensible phrases of keywords along with several links to other websites selling Coach and other various products, many of them competing with products offered by Complainant. Complainant argues that Respondent receives profit from the websites to which the links resolve, either through ownership or affiliate fees. The Panel finds that efforts to profit from misuse of Complainant’s mark by featuring pay-per-click links is not consistent with a bona fide offering of goods and services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s <victoria-secret-underwear.info> domain name diverts traffic away from Complainant to Respondent’s website, which advertises a variety of products, including many that compete with Complainant’s products. The Panel finds that this diversion disrupts Complainant’s business by causing Complainant to lose customers and therefore shows bad faith registration and use according to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant contends that Internet users are attracted to Respondent’s website because of the <victoria-secret-underwear.info> domain name that features Complainant’s mark. As a result of the similarity between the disputed domain name and Complainant’s mark, Complainant argues that consumers are likely to be confused about a relationship or association between Complainant and Respondent, a result that Respondent intended. Complainant argues that Respondent aims to commercially profit from this attraction and confusion, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). The Panel agrees. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). 

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoria-secret-underwear.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  March 10, 2011

 

 

 

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