national arbitration forum

 

DECISION

 

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

Claim Number: FA1106001393067

 

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 thulasikumar (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecret-lingerieshop.com>, registered with BigRock Solutions 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2011; the National Arbitration Forum received payment on June 12, 2011.

 

On June 16, 2011, BigRock Solutions Pvt Ltd. confirmed by e-mail to the National Arbitration Forum that the <victoriasecret-lingerieshop.com> domain name is registered with BigRock Solutions Pvt Ltd. and that Respondent is the current registrant of the name.  BigRock Solutions Pvt Ltd. has verified that Respondent is bound by the BigRock Solutions 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@victoriasecret-lingerieshop.com.  Also on June 16, 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 July 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <victoriasecret-lingerieshop.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 <victoriasecret-lingerieshop.com> domain name.

 

3.    Respondent registered and used the <victoriasecret-lingerieshop.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., is the owner of the VICTORIA’S SECRET mark and has multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).  Complainant uses the mark as the name of more than 1,000 retail stores which advertise and sell a wide range of items bearing the VICTORIA’S SECRET mark.  Complainant also uses the mark in connection with its print mail-order catalogue and its e-commerce site located at <victoriassecret.com>. 

 

Respondent, thulasikumar, registered the disputed domain name on February 12, 2011.  The disputed domain name resolves to a website entitled “Victoria’s Secrete Beauty Lingeries.”  The website contains images of women in lingerie and swimwear with links to Google advertisements, some of which offer goods that compete with Complainant’s goods.  Respondent presumably receives click-through fees based on the displayed links. 

 

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

 

Trademark registration with a governmental trademark authority is one way for a complainant to establish rights in a mark under Policy ¶ 4(a)(i).  See 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); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).  Complainant submits evidence of multiple trademark registrations for its VICTORIA’S SECRET mark with a federal trademark authority, the USPTO (e.g., Reg. No. 1,146,199 issued January 20, 1981).  The Panel therefore concludes that Complainant has sufficiently established its rights in the mark under Policy ¶ 4(a)(i). 

 

Complainant contends that Respondent’s <victoriasecret-lingerieshop.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  First, Complainant states that its mark is contained in its entirety, absent the apostrophe and space, which cannot be included in a domain name, and the “s” in VICTORIA’S.  The Panel finds that these alterations are not sufficient to distinguish the disputed domain name.  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 American Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).  Complainant goes on to assert that the addition of the hyphen and the descriptive terms “lingerie” and “shop” are also insufficient to properly distinguish the disputed domain name.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also American 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)).  Furthermore, the Panel finds that adding a gTLD does not render the disputed domain name unique.  Accordingly, the Panel concludes that Respondent’s <victoriasecret-lingerieshop.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). 

 

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

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant is able to shift the burden of proof to Respondent if it is able to make an initial prima facie case showing Respondent’s lack of rights and legitimate interests in the disputed domain name.  The Panel finds Complainant has met that burden by offering screen shots of the website to which the disputed domain name resolves thereby shifting the burden to Respondent to prove it has rights or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  The Panel may assume Respondent lacks rights and legitimate interests in the disputed domain name due to its failure to file a response in this matter; however, the Panel will still examine the record in its entirety before making such a determination according to the factors enumerated in Policy ¶ 4(c).  See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts Respondent is not commonly known by the disputed domain name.  Respondent has offered no evidence to support a contrary finding.  The WHOIS information identifies the registrant of the disputed domain name as “thulasikumar,” which this Panel finds is not similar to the disputed domain name.  Thus, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); 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).

 

Complainant also asserts Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.  Respondent’s disputed domain name resolves to a site displaying images of women wearing undergarments, swim wear, and lingerie, along with links to a variety of third-party sites including links to Complainant’s competitors.  The Panel infers Respondent collects click-through fees from the linked sites for each Internet user diverted through the corresponding link.  The Panel finds Respondent has not engaged in a bona fide offering of goods or services nor has it made a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) by providing links to third party websites some of which resolve to Complainant’s competitors and receiving click-through fees for it.  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 finds that Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Under Policy ¶ 4(b)(iii), Complainant may provide evidence of bad faith registration and use by Respondent if the disputed domain name disrupts its business.  Complainant contends Respondent’s disputed domain name disrupts its business by offering links to its competitors.  Internet users may purchase goods from the linked sites instead of Complainant.  The Panel finds Respondent has disrupted Complainant’s business by offering links to its Competitors which is affirmative evidence of Respondent’s bad faith registration and use of the disputed domain name 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 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).

 

Complainant asserts Respondent is attempting to gain commercially from the disputed domain name.  Complainant’s assertion is based on the premise that Internet users will become confused when they arrive at Respondent’s website and see content associated with Complainant’s competitors.  Internets users may then click on the linked sites providing Respondent with revenue created by the confusion associated with the sponsorship or affiliation of the disputed domain name and Complainant.  The Panel agrees and finds Respondent has registered the disputed domain name for its own commercial gain constituting bad faith registration and use under Policy ¶ 4(b)(iv).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Policy ¶ 4(a)(iii) is 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 <victoriasecret-lingerieshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  July 19, 2011

 

 

 

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