national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Rubalier

Claim Number: FA1106001392704

 

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 Rubalier (“Respondent”), Equatorial Guinea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretcheap.info>, registered with Webagentur.at Internet Services GmbH d/b/a domainname.at.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011. The Complainant was submitted in both German and English.

 

On June 15, 2011, Webagentur.at Internet Services GmbH d/b/a domainname.at confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcheap.info> domain name is registered with Webagentur.at Internet Services GmbH d/b/a domainname.at and that Respondent is the current registrant of the name.  Webagentur.at Internet Services GmbH d/b/a domainname.at has verified that Respondent is bound by the Webagentur.at Internet Services GmbH d/b/a domainname.at 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 20, 2011, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of July 11, 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@victoriassecretcheap.info.  Also on June 20, 2011, the German 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 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

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 <victoriassecretcheap.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 <victoriassecretcheap.info> domain name.

 

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

 

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

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., is a retailer of women’s lingerie and apparel, as well as personal care and beauty products, swimwear and outwear. Complainant sells its products online, through its catalogues and in its retail stores. Complainant has registered the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 1,146,199     issued January 20, 1981;

Reg. No. 1,908,042     issued August 1, 1995;

Reg. No. 2,455,260     issued May 29, 2001; and

Reg. No. 2,480,533     issued August 5, 2008.

 

Respondent, Rubalier, registered the <victoriassecretcheap.info> domain name on December 8, 2009. The disputed domain name resolves to a website featuring a variety of links to businesses unrelated to Complainant and to businesses competing with 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 has registered the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 1,146,199     issued January 20, 1981;

Reg. No. 1,908,042     issued August 1, 1995;

Reg. No. 2,455,260     issued May 29, 2001; and

Reg. No. 2,480,533     issued August 5, 2008.

 

The Panel finds that Complainant’s registered marks with the USPTO establish that Complainant has rights in the mark for the purposes of Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office). The Panel finds that a USPTO trademark registration establishes Complainant’s rights even when Respondent lives or operates in a country outside the U.S. 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).

 

Complainant argues that Respondent’s <victoriassecretcheap.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain name only differs from Complainant’s mark in the following ways: the deletion of the space between terms and the apostrophe and the addition of the generic term “cheap” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that deleting spaces and apostrophes in Complainant’s mark does not change the essential character of Complainant’s mark. 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 Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). The Panel also concludes that adding a generic term and a gTLD do not remove the disputed domain name from the realm of confusing similarity. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); 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)). The Panel accordingly concludes that Respondent’s <victoriassecretcheap.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. c. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does not have rights or legitimate interests.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the disputed domain name.

 

Complainant asserts that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark in domain names or in any other way. Complainant contends that Respondent is not affiliated with or endorsed by Complainant. The WHOIS information for the <victoriassecretcheap.info> domain name identifies the registrant as “Rubalier,” which the Panel finds has no facial association to the disputed domain name. The Panel thus concludes that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant contends that Respondent uses the <victoriassecretcheap.info> domain name to redirect Internet users to a web directory of pay-per-click links, both to unrelated and competing third-party websites. Complainant argues that using its mark to derive revenue from diverting traffic to websites unaffiliated with Complainant and promoting businesses unrelated to Complainant does not constitute a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 holds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s resolving website at the <victoriassecretcheap.info> domain name features pay-per-click links to the websites of competing businesses. The Panel finds that these advertisements may divert Internet users away from Complainant, thereby disrupting Complainant’s business. The Panel determines that by facilitating competition with Complainant in this manner, Respondent’s activities in connection with the disputed domain name disrupt Complainant’s business and show bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy             ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Respondent registered the <victoriassecretcheap.info> domain name with the intent to attract Internet users seeking Complainant. Complainant argues that the similarity between the disputed domain name and Complainant’s mark and the presence of related and competing links on the resolving website create a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website. Complainant contends that as the links displayed on Respondent’s resolving website are presumably pay-per-click, they generate revenue for Respondent, making Respondent’s misappropriation of Complainant’s mark profitable for Respondent. The Panel finds that this behavior indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). 

 

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

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  July 15, 2011

 

 

 

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