national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management v. Chan Wing Lim

Claim Number: FA1105001388155

 

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 Chan Wing Lim (“Respondent”), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretspree.info>, registered with eNom, 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2011; the National Arbitration Forum received payment on May 11, 2011.

 

On May 11, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretspree.info> 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 May 12, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@victoriassecretspree.info.  Also on May 12, 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 June 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <victoriassecretspree.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 <victoriassecretspree.info> domain name.

 

3.    Respondent registered and used the <victoriassecretspree.info> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, operates over 1,000 stores and sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards at its stores and on its website.  Complainant utilizes its VICTORIA’S SECRET mark in connection with its stores and products.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981). 

 

Respondent, Chan Wing Lim, registered the <victoriassecretspree.info> domain name on December 20, 2010.  The disputed domain name resolves to an inactive website.  The disputed domain name formerly resolved to a website that offered Internet users a $1,000 gift card for Complainant’s stores if Internet users provided Respondent with personal information and participated in “sponsor offers” from businesses unrelated to Complainant.

 

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 alleges that it has established rights in the VICTORIA’S SECRET mark.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) and Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panels concluded that USPTO trademark registrations are sufficient to establish rights in a mark.  Complainant holds numerous trademark registrations with the USPTO for its mark (e.g., Reg. No. 1,146,199 issued January 20, 1981).  In Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panels also held that a complainant is not required to register a mark within the country a respondent operates in.  Thus, while Respondent resides in Singapore, the Panel determines that Complainant has established rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent’s <victoriassecretspree.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The only difference between the disputed domain name and Complainant’s mark is the removal of the apostrophe and the space in Complainant’s mark and the addition of the generic term “spree” and the generic top-level domain (“gTLD”) “.info.”  In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) and Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000), the panels respectively found that the removal of a space and the removal of an apostrophe failed to sufficiently distinguish a disputed domain name.  Similarly, the panels, in Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) and Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004), held that the addition of a generic term failed to differentiate the disputed domain names from the complainants’ marks.  Finally, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels determined that the addition of a gTLD was irrelevant to a Policy ¶ 4(a)(i) analysis.  Based on this precedent, the Panel concludes that Respondent’s <victoriassecretspree.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

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <victoriassecretspree.info> domain name.  In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  In this case, the Panel finds Complainant made a sufficient prima facie case.  In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name.  However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant claims that Respondent is not commonly known by the <victoriassecretspree.info> domain name.  Complainant asserts that Respondent is not affiliated with Complainant and that Respondent is not licensed or permitted to use the VICTORIA’S SECRET mark.  The WHOIS information identifies the domain name registrant as “Chan Wing Lim,” which the Panel determines is not similar to the <victoriassecretspree.info> domain name.  The Panel has examined the record and has failed to find any evidence that Respondent is commonly known by the disputed domain name.  Therefore, the Panel holds that Respondent has not established rights or legitimate interests in the <victoriassecretspree.info> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

 

Complainant argues that Respondent formerly used the <victoriassecretspree.info> domain name to resolve to a website that purported to give away a $1,000 gift card for Complainant’s products.  According to Complainant, in order for an Internet user to receive the gift card, the Internet user would have to provide personal information and would have to review third-party offers that are unaffiliated with Complainant.  Complainant argues that Respondent received referral fees from these offers.  The Panel has reviewed the screen shots of this prior use provided by Complainant and has determined that Respondent’s former use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).  See Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that the respondent had no rights or legitimate interests in a domain name that it used to redirect Internet users to a commercial website as part of that website’s affiliate program, where the resultant website contained banner ads as well as various links to offers for free merchandise, including merchandise from the complainant's competitor); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).

 

Complainant asserts that Respondent currently fails to make an active use of the <victoriassecretspree.info> domain name.  In Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) and Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panels held that the failure to make an active use of the disputed domain name is further evidence that a respondent lacks legitimate rights and interests under Policy ¶ 4(a)(ii).  The Panel finds accordingly.

 

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

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s <victoriassecretspree.info> domain name formerly resolved to a website that offered to give Internet users a gift card for Complainant’s products if the Internet users provided personal information and reviewed third-party offers.  Complainant asserts that Respondent commercially benefitted from this use by receiving referral fees from the third-parties.  The Panel finds Respondent utilization of Complainant’s VICTORIA’S SECRET mark and logos, Respondent’s purported offer of Complainant’s gift card, and Respondent’s use of the confusingly similar domain name all reveal an attempt by Respondent to profit from confusion as to Complainant’s affiliation with the disputed domain name.  Thus, the Panel concludes that Respondent’s registration and former use of the <victoriassecretspree.info> domain name was in bad faith under Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).

 

According to Complainant, Respondent currently is not making an active use of the disputed domain name.  The Panel determines that this failure to make an active use is further evidence that Respondent’s registration and use of the <victoriassecretspree.info> domain name was, and is, in bad faith pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

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 <victoriassecretspree.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  June 17, 2011

 

 

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