Victoria's Secret Stores Brand Management, Inc. v. huangming / ming huang
Claim Number: FA1106001392530
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 huangming / ming huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriassecret-boots.com> and <victoriassecret-boots.org>, registered with Bizcn.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2011; the National Arbitration Forum received payment on June 7, 2011. The Complain was submitted in both English and Chinese
On June 7, 2011, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 June 13, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 5, 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@victoriassecret-boots.com and postmaster@victoriassecret-boots.org. Also on June 13, 2011, the Chinese language 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 July 7, 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names.
3. Respondent registered and used the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., owns the VICTORIA’S SECRET mark which it uses in connection with its retail fashion sales, including the sale of boots and other footwear. Complainant owns trademark registrations with the United States Patent and Trademark office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).
Respondent, huangming / ming huang, registered the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names on January 9, 2011 and January 10, 2011, respectively. The <victoriassecret-boots.com> domain name previously resolved to a webpage which displayed links to third-party websites, some of which are competitors of Complainant. The domain name is currently inactive. The <victoriassecret-boots.org> domain name resolves to a webpage which displays links to third-party websites, some of which are competitors of Complainant.
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.
In order to establish rights in a mark, a complainant may provide evidence of trademark registration. See 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).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has provided the Panel with evidence of its trademark registrations with the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981). The country in which a trademark is registered is of no importance when determining if a complainant has rights, despite the fact that the trademark is not registered in the country in which the respondent is from. See 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); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”). The Panel finds that Complainant has rights under Policy ¶ 4(a)(i) in the VICTORIA’S SECRET mark.
A respondent may not register a domain name which infringes upon a complainant’s mark due to its confusing similarity. The addition of a generic top-level domain (“gTLD”) has no effect on the determination of confusing similarity of a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Similarly, the addition of a descriptive term fails to negate confusion between a domain name and a mark. See 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 Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Lastly, the addition of a hyphen does nothing to distinguish a domain name from the mark it is similar to. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Furthermore, panels continue to find that the deletion of spaces in a mark fail to distinguish a disputed domain name from the mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Finally, the deletion of an apostrophe is insufficient to differentiate a domain name from the mark it is allegedly infringing upon. 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 the domain name from the mark); 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 domain names that Respondent registered are not sufficient to be truly independent of Complainant’s mark. Both disputed domain names are subject to the addition of a gTLD, one followed by “.com,” the other by “.org,” as well as the addition of a hyphen. Both also include the descriptive term “boots” which is one of the products sold by Complainant in connection with the VICTORIA’S SECRET mark. Lastly, a space and an apostrophe have been deleted from both of the disputed domain names. Therefore, the Panel finds that the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
The Panel finds that Policy ¶ 4(a)(i) has been met.
In order for the burden to shift to the respondent to prove rights and legitimate interests, the complainant must first make a prima facie case in support of its allegations. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Respondent failed to respond to the Complaint. As such, the Panel may presume that Respondent has no rights or legitimate interests in the disputed 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel finds that Complainant has made a prima facie case and will review the record to determine if there is evidence to suggest that Respondent has rights or legitimate interests in the disputed domain names.
If a respondent is commonly known by a disputed domain name, the respondent has demonstrated that it has rights or legitimate interests in the disputed domain name. The WHOIS information for a domain name often suggests whether a Respondent is commonly known by the domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] 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). The WHOIS information for the <victoriassecret-boots.com> and <victoriassecret-boots.org> domain names lists “huangming / ming huang” as the domain names’ registrant. Furthermore, Complainant has not authorized Respondent to use the VICTORIA’S SECRET mark in any way. Respondent is found by the Panel to not be commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii).
The previous usage of the <victoriassecret-boots.com> domain name and the current use of the <victoriassecret-boots.org> domain name is to display links, some of which provide goods and services that compete with Complainant. Panels have often found in the past that when a disputed domain name is used to provide Internet users with links to third-party websites, some of which compete with the complainant’s business, it is evident that the respondent lacks rights and legitimate interests. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 finds that Respondent’s current and previous use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent currently has the <victoriassecret-boots.com> domain name resolve to an inactive webpage. The failure to use a domain name for any purpose has also been found to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name). The Panel finds that the lack of any content on the website resolving from the <victoriassecret-boots.com> domain name constitutes an inactive page and failure on the part of Respondent to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the webpage. The Panel finds that the disputed domain name’s inactive status demonstrates Respondent’s lack of rights and legitimate interests in it under Policy ¶ 4(a)(ii).
The Panel agrees with Complainant’s assertions that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent’s registration of both domain names, current use of the <victoriassecret-boots.org> domain name, and prior use of the <victoriassecret-boots.com> domain name has disrupted Complainant’s business endeavors. Respondent’s use of the disputed domain names diverts Internet users from Complainant’s webpage and business to third-parties offering competing goods and services. Panels have found this type of registration and use of a domain name to have been done in bad faith. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel finds that Respondent’s registration and current and previous use of the disputed domain names to redirect Internet users to Complainant’s competitors’ web pages through links is evidence of bad faith under Policy ¶ 4(b)(iii).
Respondent current use of the <victoriassecret-boots.org> domain name and prior use of the <victoriassecret-boots.com> domain name displayed numerous links, both related and unrelated to Complainant’s business and services. The links are commercially gainful for Respondent. The use of a domain name to divert Internet traffic from a complainant’s website to the respondent’s website is evidence of bad faith registration and use. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Respondent, having chosen confusingly similar domain names and profiting from them, has registered and used the disputed domain names in the aforementioned way because of the attraction for commercial gain outlined in Policy ¶ 4(b)(iv). The Panel thus finds that the registration and use of the disputed domain names was done in bad faith pursuant to Policy ¶ 4(b)(iv).
Currently, the <victoriassecret-boots.com> domain name resolves to an inactive webpage. It has been found in the past that the failure to make an active use of a domain name demonstrates bad faith on the part of the respondent as far as registration and use of the domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith); 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). Respondent has allowed the <victoriassecret-boots.com> domain name to remain inactive rather than utilizing the domain name in some substantive way. Therefore, the Panel finds that this is further evidence of Policy ¶ 4(a)(iii) bad faith registration and use.
Having demonstrated that bad faith registration and use of the disputed domain names, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecret-boots.com>, ,<victoriassecret-boots.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 8, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page