national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Mediaelite / Jay Chow

Claim Number: FA1106001393077

 

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 Mediaelite / Jay Chow (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretcredit.com>, registered with RegisterMatrix.com Corp.

 

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 12, 2011; the National Arbitration Forum received payment on June 12, 2011.

 

On June 17, 2011, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcredit.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name.  RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 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@victoriassecretcredit.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.

 

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

 

On July 13, 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.

 

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 <victoriassecretcredit.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 <victoriassecretcredit.com> domain name.

 

3.    Respondent registered and used the <victoriassecretcredit.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., and its licensees have used the VICTORIA’S SECRET mark since 1977 in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear.  Complainant holds numerous trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 issued January 20, 1981).

 

Respondent, Mediaelite / Jay Chow, registered the <victoriassecretcredit.com> domain name on April 25, 2008.  The disputed domain name redirects to first-time visitors to the <amazingfreerewards.com> website which offers $1,000 gift cards to Complainant’s stores in exchange for providing personal information and completing sponsor offers from businesses unrelated to Complainant.  Subsequent visits to the disputed domain name resolve to a directory website which displays third-party links unrelated to Complainant’s business.

 

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 asserts that it has established its rights in the VICTORIA’S SECRET mark.  Rights in a mark may be established through registration with a federal trademark authority.  See 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); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  Previous panels have held that it is unnecessary for a complainant to register its mark within the country where a respondent resides or operates, in this case China.  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).  Here, Complainant holds a number of trademark registrations with the USPTO for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 issued January 20, 1981).  Therefore, the Panel finds that Complainant has confirmed its rights in the VICTORIA’S SECRET mark through its federal trademark registration according to Policy ¶ 4(a)(i).

 

Complainant also asserts that Respondent’s <victoriassecretcredit.com> domain name is confusingly similar to its VICTORIA’S SECRET mark.  The disputed domain name utilizes Complainant’s entire mark and only alters it by deleting the apostrophe, deleting the space between the words of the mark, and adding the generic term “credit” and generic top-level domain (“gTLD”) “.com.”  The Panel finds that deletion of a space and addition of a gTLD do not significantly distinguish the disputed domain name from Complainant’s 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).  The Panel also finds that deleting punctuation does not remove the disputed domain name from the realm of confusing similarity.  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).  Finally, the Panel finds that the addition of the word “credit,” which is related to Complainant’s promotion of credit cards in connection with its store brand, is only likely to heighten the confusing similarity of the disputed domain name.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).  The Panel concludes that Respondent’s disputed 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) has been met.

 

Rights or Legitimate Interests

 

Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel stated, “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.”  Complainant has successfully presented a prima facie case in support of its claims.  Respondent defaulted by not submitting a response to the Complaint, which the Panel may interpret as Respondent’s admission to having no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  However, the Panel elects to look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant claims that Respondent is not commonly known by the <victoriassecretcredit.com> domain name.  The WHOIS information lists the domain name registrant as “Mediaelite / Jay Chow,” which is not similar to the disputed domain name.  Additionally, Complainant maintains that Respondent has never been licensed or permitted to use its VICTORIA’S SECRET mark in any manner, including within a domain name.  Given these findings, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Respondent’s <victoriassecretcredit.com> domain name initially resolves to <amazingfreerewards.com> website, which offers Complainant gift cards in exchange for providing personal information and completing sponsor offers from unrelated businesses.  Respondent likely receives referral click-through fees for sending Internet users to the gift card website.  The Panel finds that Respondent’s use of the disputed domain name to direct Internet users to a phishing website, which solicits customers personal information in exchange for a gift card, 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 Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

On subsequent visits to the disputed domain name, Internet users are directed to a directory website with third-party links to commercial sites unrelated to Complainant’s business in women’s apparel and beauty care products.  Again, Respondent likely collects click-through fees from these links.  The Panel finds that Respondent’s use of the disputed domain name to host a directory website with links unrelated to Complainant 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)(i).  See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s <victoriassecretcredit.com> domain name disrupts Complaint’s business.  Respondent’s disputed domain name redirects Internet users to commercial or directory websites, including one website which offers gift cards to Complainant’s stores.  Users may then attempt to obtain a gift card from the resolving website instead of dealing through Complainant’s legitimate credit card service.  The Panel holds that Respondent’s registration and use of the disputed domain name to offer Complainant’s gift cards does disrupt Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).

 

The Panel infers that Respondent receives click-through fees both from the <amazingfreerewards.com> website and the third-party links on the directory website.  Complainant claims that Respondent registered the disputed domain name in order to create a likelihood of confusion as to Complainant’s association with the resolving websites and featured links and offers.  Respondent attempts to capitalize off this confusion by generating click through fees.  The Panel finds that such registration and use of the <victoriassecretcredit.com> domain name constitutes bad faith according to Policy ¶ 4(b)(iv).  See Univ. 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).”); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met. 

 

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 <victoriassecretcredit.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  July 18, 2011

 

 

 

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