Victoria's Secret Stores Brand Management, Inc. v. Petre Nicoara
Claim Number: FA1103001377177
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 Petre Nicoara (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretshop.com>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no 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 March 10, 2011; the National Arbitration Forum received payment on March 10, 2011.
On March 10, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <victoriasecretshop.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 March 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 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@victoriasecretshop.com. Also on March 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 April 4, 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 uses the VICTORIA’S SECRET mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear.
Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark (including Reg. No. 1,146,199, issued January 20, 1981).
Respondent registered the <victoriasecretshop.com> domain name on March 13, 2010.
The disputed domain name resolves to a commercial website that offers for sale products that compete with Complainant’s products.
That website that prominently features Complainant’s VICTORIA’S SECRET mark and images with titles like “bras,” “lingerie,” “panties,” “shoes,” and “swim.”
Respondent’s <victoriasecretshop.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization.
Respondent is not affiliated with Complainant, nor has Complainant licensed Respondent to use its VICTORIA’S SECRET trademark in any way.
Respondent does not have any rights to or legitimate interests in the domain name <victoriasecretshop.com>.
Respondent registered and uses the <victoriasecretshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding in compliance with the requirements of the Policy. However, in e-mail communications with the National Arbitration Forum, Respondent has asserted, among other things, that:
Respondent registered the contested domain name on behalf of his former spouse, whose name is Victoria.
Respondent’s intent in registering the <victoriasecretshop.com> domain name was to facilitate creation of a business devoted to the marketing of women’s clothing under the brand “Victoria.”
Respondent wishes to renew the domain name in pursuit of this business plan.
(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.
Under Policy ¶ 4(a)(i), Complainant has rights in the VICTORIA’S SECRET trademark by virtue of its registrations of the mark with a national trademark authority, the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through registration of the mark with the USPTO.
See also 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 federal trademark registrations).
It is irrelevant for purposes of Policy ¶ 4(a)(i) whether Complainant holds trademark registrations for the VICTORIA’S SECRET mark from a trademark authority in the country in which Respondent resides, it being sufficient that a complainant can demonstrate that it has rights in a mark in some jurisdiction. 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).
The <victoriasecretshop.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. In forming the disputed domain name, Respondent merely omits the apostrophe and the letter “s” from the “Victoria’s” portion of the mark, deletes the space between the terms of the mark, and adds the generic term “shop” and the generic top-level domain (“gTLD”) “.com.” Under the Policy, these alterations fail to distinguish the domain name from the mark. 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 a domain name from a competing mark); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.
Further see Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see too Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a 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)); finally see Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Therefore, the Panel finds that Respondent’s <victoriasecretshop.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case showing that Respondent lacks rights to or legitimate interests in the contested <victoriasecretshop.com> domain name. The burden then shifts to Respondent to prove that it has such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
We may view Respondent’s failure to submit a Response to the Complaint filed in this proceeding as evidence that Respondent lacks rights to or legitimate interests in its domain sufficient to satisfy the requirements of the Policy. See, for example, 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.
Although Respondent has failed to respond to the allegations of the Complaint, we will examine the evidence of record, by reference to the criteria 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 note that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with Complainant, nor has Complainant licensed Respondent to use its VICTORIA’S SECRET trademark in any way, and that Respondent is not commonly known by the disputed domain name, either as a business, individual, or other organization. Moreover, the pertinent WHOIS information lists the registrant of the disputed domain name only as “Petre Nicoara”, which does not resemble the <victoriasecretshop.com> domain name. On this record, we must conclude that Respondent is not commonly known by the <victoriasecretshop.com> domain name so as to have demonstrated that it has rights to or legitimate interests in the contested domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in a contested domain name, where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant alleges, without objection from Respondent, that the disputed domain name resolves to a website that prominently features its VICTORIA’S SECRET mark and images with titles like “bras,” “lingerie,” “panties,” “shoes,” and “swim,” and the products featured on that website appear to be those of Complainant’s business competitors. We may comfortably presume from the circumstances that Respondent attempts to profit from the sale of these competing products. Accordingly, Respondent uses the disputed domain name, which is confusingly similar to Complainant’s mark, to offer for sale products in competition with Complainant’s products. This is not a use which is 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003):
Respondent’s appropriation of [Complainant’s] … mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.
See also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that a respondent was not using a domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because that respondent used the domain name to take advantage of a complainant's mark by diverting Internet users to a competing commercial website).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <victoriasecretshop.com> domain name to resolve to a website that offers for sale products that compete with Complainant’s products. Respondent’s use of the domain name in the manner alleged in the Complaint disrupts Complainant’s business and evidences registration and use of the domain in bad faith pursuant to 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website).
Additionally, Respondent uses the disputed domain name in connection with the operation of a commercial website. Because Respondent’s domain name is confusingly similar to Complainant’s VICTORIA’S SECRET trademark, it is plain that Respondent has, for commercial gain, attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the possibility of Complainant’s sponsorship, affiliation or endorsement of that website. Consequently, Respondent has engaged in registration and use of the contested domain in bad faith 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 products illustrates that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where a domain name resolved to a website that offered products similar to those sold under a complainant’s mark).
Finally in connection with this head of the Policy, we note that Respondent’s assertion that its intent in registering the <victoriasecretshop.com> domain name was to facilitate creation of a business devoted to the marketing of women’s clothing under the brand “Victoria” is preposterous. If that were Respondent’s legitimate intent, there would have been no need for it to incorporate in the contested domain name the word “secret.” That Respondent used in the domain both the name “Victoria” and the balance of Complainant’s mark (“Secret”) belies Respondent’s assertion of innocent intent and makes clear that its registration and use of the contested domain name, like its participation in this proceeding, was and is in bad faith.
For these reasons, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <victoriasecretshop.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 15, 2011
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