Victoria's Secret Stores Brand Management, Inc. v. Laura Almond
Claim Number: FA1104001381936
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 Laura Almond (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretdiet.com>, registered with 1&1 Internet AG.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 6, 2011; the National Arbitration Forum received payment on April 6, 2011.
On April 7, 2011, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <victoriasecretdiet.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 April 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 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@victoriasecretdiet.com. Also on April 8, 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.
A timely Response was received and determined to be complete on April 8, 2011.
On April 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant. Respondent consents.
A. The Complainant's contention can be summarised as follows:
The Complainant is the owner of U.S. trade marks for VICTORIA'S SECRET, a mark used in commerce since June 12, 1977 for, inter alia, women's apparel. The mark is famous. There are 1,000 stores across the U.S. and the mark is known worldwide through the web site at <victoriasecret.com>, started in 1998. In 2009, nearly $5 billion of merchandise was sold under the mark.
The Domain Name is confusingly similar to and incorporates the Complainant's mark adding only the generic term "diet".
Respondent is not making legitimate non commercial or fair use of the Domain Name, has not been licensed to use the Complainant's mark in any manner and the site is not endorsed by the Complainant. Respondent is not commonly known by the Domain Name. The Domain Name was registered more than 30 years after Complainant began using its mark, 15 years after it registered its domain name for its web site, and long after the mark became famous.
The Domain Name resolves to a site promoting a diet plan, with links to third-party businesses for the Respondent's commercial benefit. This is not bona fide use as it is diverting traffic from the Complainant to a web site it does not own or authorise. The Respondent has, therefore, intentionally attempted to attract for commercial gain Internet users to the Respondent's web site or other on line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent's web site or products thereon. Given the fame of the mark, the Respondent is trading off its reputation and goodwill and the Respondent should have known or had constructive notice of the mark. The Domain Name was registered and is being used in bad faith.
B. Respondent
Respondent has consented to transfer the Domain Name to the Complainant and has indicated she did not understand trade mark law.
Complainant owns registered trade marks for VICTORIA'S SECRET.
Respondent has used the Domain Name to point to a site not connected with the Complainant without consent.
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."
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.
The Panel's opinion is that the Complainant has rights in a trade mark that is confusingly similar to the Domain Name for the purposes of the Policy and the Respondent has no legitimate interest in the name and has registered and used it in bad faith.
However, it has been held that in circumstances such as this where the Respondent has not contested the transfer of the Domain Name and agrees to transfer the Domain Name to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). As such the Panel will order the transfer of the Domain Name to the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretdiet.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: April 14, 2011
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