national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. PrivacyProtect.org / Domain Admin

Claim Number: FA1106001392101

 

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 PrivacyProtect.org / Domain Admin (“Respondent”), Luxembourg.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretswimsuit.com>, registered with WEB WERKS INDIA PVT. LTD.

 

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 5, 2011; the National Arbitration Forum received payment on June 5, 2011.

 

On June 7, 2011, WEB WERKS INDIA PVT. LTD. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretswimsuit.com> domain name is registered with WEB WERKS INDIA PVT. LTD. and that Respondent is the current registrant of the name.  WEB WERKS INDIA PVT. LTD. has verified that Respondent is bound by the WEB WERKS INDIA PVT. LTD. 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 June 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 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@victoriasecretswimsuit.com.  Also on June 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <victoriasecretswimsuit.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 <victoriasecretswimsuit.com> domain name.

 

3.    Respondent registered and used the <victoriasecretswimsuit.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., has been using the VICTORIA’S SECRET mark in commerce since at least 1977 in connection with the sale of women’s lingerie and other apparel, personal and beauty care products, swimwear, and outwear.  Complainant owns numerous trademark registrations for its mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, PrivacyProtect.org / Domain Admin, registered the <victoriasecretswimsuit.com> domain name sometime after May 1, 2009.  Respondent’s disputed domain name does not resolve to an active website.

 

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

 

The Panel has determined that Complainant has effectively established its rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) through its numerous trademark registrations with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981) of said mark.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO]  under Policy ¶ 4(a)(i).”).  Further, the Panel finds that Complainant’s establishment of rights under the Policy need not include trademark registrations in the country of Respondent’s residence or business activities.  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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant next alleges that the <victoriasecretswimsuit.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  Complainant notes that the domain name contains a version of its mark that deletes the apostrophe and letter “s” from the term VICTORIA’S as well as the space between the terms of its mark.  Further, Complainant notes that Respondent added the term “swimsuit” to the mark, which is a generic term that relates to an aspect of Complainant’s business in swimwear.  Lastly, Complainant argues that the generic top-level domain (“gTLD”) “.com” is not relevant under a Policy ¶ 4(a)(i) discussion.  The Panel notes all of the changes made to Complainant’s mark in the disputed domain name and agrees with Complainant that the domain name is confusingly similar to the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).  See 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.”); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have rights or legitimate interests in the <victoriasecretswimsuit.com> domain name under Policy ¶ 4(a)(ii).  It is Complainant’s initial burden to establish a prima facie case to support its allegations.  If Complainant is successful in establishing a prima facie case the burden then shifts to Respondent to show that it does have rights or legitimate interests in the domain name by providing the Panel with evidence of such.  See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (concluding that under Policy ¶ 4(a)(ii) and the factors listed in Policy ¶ 4(c), a complainant must first make a prima facie case that the respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that the respondent is not commonly known by the disputed domain name, and that the respondent is not making a legitimate noncommercial or fair use of the disputed domain name before the burden shifts to the respondent to show otherwise).  The Panel finds that Complainant has presented a sufficient prima facie case to shift the burden to Respondent.  However, Respondent has not responded to these proceedings, thereby enabling the Panel to make the inference that Respondent does not have rights or legitimate interests in the domain name.  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 Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).  Nonetheless, the Panel will continue to analyze the evidence on record to ensure that Complainant has satisfied the required elements of the Policy.

 

Complainant first argues that Respondent is not commonly known by the disputed domain name as business, individual, or other organization.  Complainant takes note of the WHOIS information on file which identifies the domain name registrant as, “PrivacyProtect.org Domain Admin,” to back up its proposition that Respondent is not known as the <victoriasecretswimsuit.com> domain name.  Further, Complainant asserts that Respondent has not been licensed or permitted to use Complainant’s marks in any way.  Without the benefit of Respondent’s Response, the Panel finds that Respondent is not commonly known by the <victoriasecretswimsuit.com> domain name under Policy ¶ 4(c)(ii).  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

Further, Complainant argues that Respondent is not making an active use of the disputed domain name as the domain name does not resolve to an active website.  Complainant alleges that Respondent acquired the domain name sometime after May 1, 2009 when the domain name was ordered to be transferred to Complainant in a UDRP case, and has not made an active use since then.  Complainant asserts that such failure to make an active use of the domain name provides evidence that Respondent is not using the domain name for 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 agrees and finds that Respondent’s failure to make an active use of the domain name is not 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). 

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).

 

Complainant argues that Respondent has failed to make an active use of the domain name since acquiring such some time after May 1, 2009.  Complainant argues that such a failure to use or show demonstrable preparations to use the domain name is evidence that Respondent acquired the domain in bad faith.  The Panel agrees and finds that Respondent’s failure to use the <victoriasecretswimsuit.com> domain name in any tangible way is evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also 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).

 

The Panel finds that 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 <victoriasecretswimsuit.com> domain name be TRANSFERRED from Respondent to Complainant.

 

James A. Carmody, Esq., Panelist

Dated:  July 1, 2011

 

 

 

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