Victoria's Secret Stores Brand Management, Inc. v. Deidre Longe
Claim Number: FA1106001395835
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 Deidre Longe (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecrettosuccesswithmen.com>, registered with GoDaddy.com.
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 28, 2011; the National Arbitration Forum received payment on June 28, 2011.
On June 29, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <victoriassecrettosuccesswithmen.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@victoriassecrettosuccesswithmen.com. Also on June 29, 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 25, 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 <victoriassecrettosuccesswithmen.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 <victoriassecrettosuccesswithmen.com> domain name.
3. Respondent registered and used the <victoriassecrettosuccesswithmen.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., owns the VICTORIA’S SECRET mark. Complainant has multiple registrations for its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,146,199 registered January 20, 1981). Complainant uses the VICTORIA’S SECRET mark in connection with its sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear.
Respondent, Deidre Longe, registered the <victoriassecrettosuccesswithmen.com> domain name on January 10, 2011. The disputed domain name resolves to a website which promotes Respondent’s subscription-based dating and relationship advice business.
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.
Complainant has multiple registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., 1,146,199 registered January 20, 1981). The Panel, supported by cases such as Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i) and 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), finds that Complainant’s registrations with the USPTO sufficiently establish its rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
A great many changes can be made to a trademark which has been incorporated into a domain name without negating confusion enough to make the incorporation permissible. For instance, Respondent follows the disputed domain name with a string of words which are entirely generic to Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Additionally insufficient is Respondent’s removal of the space between the words “VICTORIA’S” and “SECRET” in the mark and the apostrophe in the word “VICTORIA’S.” 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 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).”). Lastly, Respondent follows the altered mark with the generic top-level domain (“gTLD”) “.com.” As gTLDs are a required element of domain names, the addition of one by Respondent is irrelevant to the Policy ¶ 4(a)(i) analysis. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel thus finds that the <victoriassecrettosuccesswithmen.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied by Complainant’s showing of rights in its VICTORIA’S SECRET mark as well as the confusing similarity of Respondent’s domain name.
The burden of proof only shifts to the respondent after the complainant has made a prima facie case in support of its claims. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); 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.”). Complainant, alleging that Respondent does not have rights or legitimate interests in the <victoriassecrettosuccesswithmen.com> domain name, has done this. Respondent, however, failed to respond to the Complaint. This inaction acts as tacit acceptance by Respondent of the claims Complainant has made. See Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). Regardless, the Panel will review the information available for evidence of rights or legitimate interests held by Respondent for the <victoriassecrettosuccesswithmen.com> domain name.
Respondent, having registered the disputed domain name under the name “Deidre Longe” and being in no way affiliated with Complainant’s VICTORIA’S SECRET mark, is not commonly known by the <victoriassecrettosuccesswithmen.com> domain name. Both Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute) and Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”) demonstrate that a disputed domain name’s WHOIS listing and information regarding the relationship between the respondent and the complainant testify to whether a respondent is commonly known by a disputed domain name. The Panel finds that Policy ¶ 4(c)(ii) is fulfilled.
Respondent’s <victoriassecrettosuccesswithmen.com> domain name resolves to a website which solicits subscriptions for its dating and relationship advice business. Unrelated, commercially gainful uses are neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name). It is incumbent upon the Panel to find that Respondent’s use of the disputed domain name is neither of these things under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant’s demonstration of Respondent’s lack of rights and legitimate interests in the disputed domain name meets the requisite showing of Policy ¶ 4(a)(ii).
The registration of a confusingly similar domain name is sure to confuse Internet users as to Complainant’s sponsorship or affiliation of Respondent’s domain name and resolving website. When a domain name has the potential to make complainant money, the intention of the complainant is clear: increase Internet traffic to increase profits. Respondent’s registration and use of the <victoriassecrettosuccesswithmen.com> domain name to confuse Internet users and profit off of this confusion by boosting subscriptions for its dating and relationship advice business was done in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been met by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecrettosuccesswithmen.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 5, 2011
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