Victoria's Secret Stores Brand Management, Inc. v. Zhao Ke
Claim Number: FA1106001392705
PARTIES
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, 1455 Pennsylvania Ave., N.W., Suite 400, Washington, D.C. 2004. Respondent is Zhao Ke (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretbikinis.com>, registered with Hang Zhou E-Business Services Co. 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.
Mr. Li Hu is as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011. The National Arbitration Forum received payment on June 9, 2011.
On June 17, 2011, Hang Zhou E-Business Services Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretbikinis.com> domain name is registered with Hang Zhou E-Business Services Co. Ltd. and that Respondent is the current registrant of the domain name. Hang Zhou E-Business Services Co. Ltd. has verified that Respondent is bound by the Hang Zhou E-Business Services Co. Ltd. registration agreement and has thereby agreed to resolve domain-name 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 Complaint and all Annexes, including a 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@victoriassecretbikinis.com. Also on June 20, 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.
The National Arbitration Forum did not receive Response from Respondent.
On July 15, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Li Hu as Panelist.
Having reviewed all the communication 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 a Written Notice, as defined in Rule 1. 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 the Panel determines that the language requirement has been satisfied through the confirmation of the registrar that English was the language of the registration agreement and, absent a Response, determines that the remainder of the proceedings may be conducted in English and the decision should also be made in English.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The Complainant owns the trademark and service mark VICTORIA’S SECRET and variations thereof (the “VICTORIA’S SECRET Marks”) and makes extensive use of them such that they have become famous throughout the world.
2. The disputed domain name is confusingly similar to Complainant’s Mark.
Respondent’s domain name <victoriassecretbikinis.com> incorporates Complainant’s VICTORIA’S SECRET mark in its entirety and merely appends the generic term “bikinis” to the mark. By registering a domain name that merely adds a generic term to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and to the web site to which it resolves. The likelihood of confusion is heightened by the choice of term added to Complainant’s mark, namely “bikinis”, because Complainant sells bikinis and Consumers might believe that <victoriassecretbikinis.com> leads to an official site for Complainant’s VICTORIA’S SECRET bikinis.
3. Respondent has no rights or legitimate interests in the disputed domain name.
The disputed domain name resolves to a web site featuring a variety of links to businesses unrelated to Complainant and to competitors of Complainant. Respondent is using the disputed domain name to confuse consumers and divert them from a legitimate VICTORIA’S SECRET web site to the disputed domain name site for commercial gain. Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i).
Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET Marks in domain names, on any web site, or in any other manner. The disputed domain name site is also not affiliated with or endorsed by Complainant.
Respondent is not commonly known by the disputed domain name, either as a business, individual, or other organizations and so its actions do not fall within Policy ¶ 4(c)(ii).
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish Complainant’s marks.
4. The disputed domain name was registered and is being used in bad faith.
Respondent is seeking to obtain commercial gain from its use of the disputed domain name website. Respondent’s use of the disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).
Given the fame of Complainant’s VICTORIA’S SECRET Marks, it is inconceivable that Respondent was not aware of their existence. Given the incorporation of Complainant’s famous marks in the disputed domain name, there is not conceivable use of it that would not infringe Complainant’s mark.
At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks.
In addition, Respondent’s registration of the disputed domain name violates the Anticybersquatting Consumer Protection Act.
B. Respondent
No Response was received from the Respondent in this case proceeding.
FINDINGS
The Complainant since 1981 owns United States trademark and service mark registrations for VICTORIA’S SECRET Marks, which, through the Complainant’s extensive use and promotion, have become famous throughout the world.
Complainant, its licensees and predecessors adopted and used in commerce the above marks since at least as early as 1977 in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear.
The Respondent registered the disputed domain name on April 21, 2010.
The Respondent was Zhao Ke in Shanghai of China.
The Respondent used the disputed domain name to resolve to a web site featuring a variety of links to businesses unrelated to Complainant.
DISCUSSION
Paragraph 15(a) of the ICANN 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant claims to have established its rights in the VICTORIA’S SECRET mark by registering it with the United States Patent and Trademark Office (“USPTO”). The Panel determines that Complainant has established rights in the VICTORIA’S SECRET mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i) (e.g., Reg. No. 1,146,199 issued January 20, 1981) even if the mark is not registered in the same country that Respondent resides in. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); See also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant also claims Respondent’s disputed domain name is confusingly similar to its VICTORIA’S SECRET mark. The disputed domain name purportedly includes the entire distinctive portion of the mark while removing an apostrophe. The disputed domain name also allegedly includes a term descriptive of Complainant’s goods, “bikinis,” and the genric top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because the changes made insufficiently differentiate the disputed domain name from Complainant’s mark. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also 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 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.”).
The disputed domain name is therefore confusingly similar to the Complainant’s VICTORIA’S SECRET mark.
The 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. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
In the case, the Complainant asserts that Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET Marks in domain names, on any web site, or in any other manner; and that the disputed domain name site is also not affiliated with or endorsed by Complainant. Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant also contends that Respondent is not making a bona fide offer of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent’s disputed domain name resolves to a site offering links to third-party websites, many of which compete with Complainant in the women’s apparel and swimwear market.
The Panel holds that Complainant has met its burden of proof, and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. However, Respondent did not respond to and deny Complainant’s assertions and also did not give any evidence to show that it does have rights or legitimate interests in the disputed domain name.
The WHOIS information appears to identify the registrant of the disputed domain name as “Zhao Ke.” Based upon the evidence on record, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The Panel further finds that Respondent’s using the disputed domain name to resolve to a site offering links to Complainant’s competitors does not qualify as a bona fide offer of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel therefore holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name
Considering the fact that Complainant’s VICTORIA’S SECRET marks are famous throughout the world, the Panel finds that Respondent “knew” or “ought to have known” the existence/the prior VICTORIA’S SECRET trademark or service mark rights of the Complainant. The Respondent’s registration of the disputed domain name incorporating the Complainant’s VICTORIA’S SECRET mark was therefore not in good faith.
Complainant alleges that Respondent’s disputed domain name disrupts its business by diverting Internet users to its competitors. Complainant claims the disputed domain name resolves to a site which offers links to Complainant’s competitors. Complainant asserts Internet users may arrive at Respondent’s website and then click through to one of Complainant’s competitors and purchase goods from them rather than Complainant. The Panel finds that the disputed domain name does disrupt Complainant’s business and as such, provides affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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)).
Complainant also alleges Respondent is gaining commercially from the confusion created by its confusingly similar domain name as it relates to the content offered and Complainant own affiliation with the website. The disputed domain name again purportedly resolves to a site offering links to Complainant’s competitors in the women’s apparel industry. Complainant argues that Internet users may arrive at the site and then perceive a non-existent connection between Complainant and the linked companies. Complainant further claims that they may then click on the links generating click-through revenue for Respondent. The Panel finds Respondent is gaining commercially from the confusingly similar domain name constituting bad faith registration and use under Policy ¶ 4(b)(iv). 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 TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel as such holds that the disputed domain name has been registered and is being used in bad faith
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 <victoriassecretbikinis.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Li Hu, Panelist
Dated: July 26,
2011
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