Victoria's Secret Stores Brand Management v. marketingsuccess4u.co.uk c/o Martin Vincent
Claim Number: FA1106001393080
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 marketingsuccess4u.co.uk c/o Martin Vincent (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyvictoriassecretwomensshoes.com>, registered with Wild West Domains, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
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 13, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyvictoriassecretwomensshoes.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 14, 2011, the Forum served the Complaint and all Annexes, including a 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@buyvictoriassecretwomensshoes.com. Also on June 14, 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 Tyrus R. Atkinson, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <buyvictoriassecretwomensshoes.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 <buyvictoriassecretwomensshoes.com> domain name.
3. Respondent registered and used the <buyvictoriassecretwomensshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, markets and sells women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear. Complainant offers these products under its VICTORIA’S SECRET mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,149,199 issued January 20, 1981).
Respondent, marketingsuccess4u.co.uk c/o Martin Vincent, registered the <buyvictoriassecretwomensshoes.com> domain name on January 26, 2010. The disputed domain name resolves to a website entitled “Buy Victoria’s Secret Womens Shoes.com,” which contains advertisements for business both competing with Complainant and unrelated to Complainant. Some of the featured hyperlinks also resolve to websites that sell products that compete with Complainant’s products.
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.
Policy ¶ 4(a)(i) requires a complainant to prove that a disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
Complainant asserts that Complainant has rights in the VICTORIA’S SECRET mark. In order to prove this assertion, Complainant presents multiple trademark registrations with the USPTO for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,149,199 issued January 20, 1981). Past panels have found that this evidence is sufficient to establish rights, even if the mark is registered in a country that the respondent does not reside in. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds accordingly under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <buyvictoriassecretwomensshoes.com> domain name is confusingly similar to its VICTORIA’S SECRET mark. The disputed domain name contains Complainant’s mark, absent the space and the apostrophe, and also includes the generic term “buy,” the descriptive terms “womens” and “shoes,” and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that the removal of a space and an apostrophe and the additions of a generic term, descriptive terms, and a gTLD all fail to sufficiently distinguish a disputed domain name from a complainant’s mark. See 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).”); 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); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel concludes that Respondent’s <buyvictoriassecretwomensshoes.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires a complainant to prove Respondent possesses no rights or legitimate interests in the domain name. Complainant alleges that Respondent lacks these rights and legitimate interests in the disputed domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 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). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <buyvictoriassecretwomensshoes.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See 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.”).
Under Policy ¶ 4(c), the Policy presents three ways for a respondent to demonstrate rights and legitimate interests: by making a bona fide offering of goods or services under Policy ¶ 4(c)(i); by being commonly known by the domain name under Policy ¶ 4(c)(ii); or by making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). A complainant may prove that a respondent lacks rights and legitimate interests by proving that the respondent cannot satisfy any of these alternatives.
Complainant contends that Respondent is not commonly known by the <buyvictoriassecretwomensshoes.com> domain name. Complainant claims that Respondent is not affiliated with Complainant and that Complainant has not licensed or permitted to use the VICTORIA’S SECRET mark. The WHOIS information identifies the domain name registrant as “marketingsuccess4u.co.uk c/o Martin Vincent,” which the Panel finds is not similar to the disputed domain name. Previous panels have determined that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the domain name, the respondent is not authorized to use the complainant’s mark, and the respondent has failed to present any supporting evidence. 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 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). After examining the record and the lack of response from Respondent, the Panel concludes that Respondent is not commonly known by the <buyvictoriassecretwomensshoes.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to Complainant, the <buyvictoriassecretwomensshoes.com> domain name resolves to a website that contains hyperlinks to businesses that compete with Complainant and are unrelated to Complainant. Some of the hyperlinks also resolve to websites that sell products that compete with Complainant’s products. Past panels have held that when a respondent is making a similar use that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)). The Panel finds accordingly.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶ 4(a)(iii) requires a complainant to prove that a respondent registered and uses a disputed domain name in bad faith. Policy ¶ 4(a)(iii) contains four different ways for a complainant to prove bad faith by showing that the respondent registered and uses the domain name for the: purpose of selling the domain name under Policy ¶ 4(b)(i); purpose of preventing the complainant from reflecting the mark in a domain name as a part of a pattern under Policy ¶ 4(b)(ii); purpose of disrupting the complainant’s business under Policy ¶ 4(b)(iii); or the purpose of profiting from the creation of a likelihood of confusion as to the complainant’s affiliation under Policy ¶ 4(b)(iv).
While Complainant does not specifically allege disruption under Policy ¶ 4(b)(iii), based on Respondent’s registration and use of the disputed domain name to provide hyperlinks to Complainant’s competitors and competing products, the Panel determines that Respondent registered and uses the <buyvictoriassecretwomensshoes.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See 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)); 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 does argue that Respondent’s registration and use constitutes bad faith registration under Policy ¶ 4(b)(iv). Respondent likely receives click-through fees from the aforementioned hyperlinks. Complainant claims Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name in order to increase traffic to the website to commercially benefit from the domain name. Past panels have held that a respondent registered and uses the disputed domain name in bad faith when the respondent uses the disputed domain name to host hyperlinks to a complainant’s competitors and unrelated third-parties. 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 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). The Panel agrees with past panels and holds that Respondent’s registration and use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyvictoriassecretwomensshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 23, 2011
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