Victoria's Secret Stores Brand Management, Inc. v. Privacyprotect.org / Domain Admin
Claim Number: FA1108001403350
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 PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriassecrects.com> and <victoriasecretrs.com>, registered with POWER BRAND CENTER CORP.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2011; the National Arbitration Forum received payment on August 16, 2011.
After numerous requests, the Registrar, POWER BRAND CENTER CORP., had not confirmed to the National Arbitration that the <victoriassecrects.com> and <victoriasecretrs.com> domain names are registered with POWER BRAND CENTER CORP. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
However, on September 27, 2011, after repeated attempts to contact POWER BRAND CENTER CORP. by ICANN, POWER BRAND CENTER CORP. responded by explaining that the failure to respond previously was based on personnel issues that had arisen and confirming by e-mail to the National Arbitration Forum that the <victoriassecrects.com> and <victoriasecretrs.com> domain names are registered with POWER BRAND CENTER CORP. and that Respondent is the current registrant of the names. POWER BRAND CENTER CORP. has verified that Respondent is bound by the POWER BRAND CENTER 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 September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@victoriassecrects.com, postmaster@victoriasecretrs.com. Also on September 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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. POWER BRAND CENTER CORP. provided new contact information for Respondent and immediately after receiving this new information on September 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, to the new contact information.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant uses its VICTORIA’S SECRET trademark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (including Reg. No. 1,146,199, registered January 20, 1981).
Respondent registered the <victoriassecrects.com> and <victoriasecretrs.com> domain names no earlier than November 27, 2002.
The disputed domain names resolves to a third-party website located at <my-lingerie-store-online.com>, which purports to offer visitors a $500 gift card for Complainant’s stores in exchange for providing a mobile phone number and personal information, and for supplying information relating to a series of offers from businesses unrelated to Complainant.
Respondent’s <victoriassecrects.com> and <victoriasecretrs.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not commonly known by the <victoriassecrects.com> and <victoriasecretrs.com> domain names.
Respondent is not affiliated with Complainant, and Complainant has not authorized Respondent to use Complainant’s VICTORIA’S SECRET mark.
Respondent does not have any rights to or legitimate interests in the domain names <victoriassecrects.com> and <victoriasecretrs.com>.
Respondent registered and uses the domain names <victoriassecrects.com> and <victoriasecretrs.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in its VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the marks PENTIUM, CENTRINO and INTEL INSIDE by registering them with the USPTO); 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).
This is true even where a respondent does not reside within the jurisdiction in which a complainant has acquired its rights in a mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Respondent’s <victoriassecrects.com> and <victoriasecretrs.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET trademark because the disputed domain names merely remove the space and apostrophe from the mark and add one or two letters and the generic top-level domain (“gTLD”) “.com,” plus, in the case of the <victoriasecretrs.com> domain name also removing the letter “s” from the mark. Under the standards of the Policy, these alterations of the mark in forming the disputed domain names do not distinguish the domain names from the mark. See Am. 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 Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to a complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); further see Pfizer Inc. v. Bargain-Name.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to a complainant’s PFIZER mark, where a respondent merely omitted the letter “i” from that mark in forming the domain name); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON).
The Panel therefore finds that Respondent’s <victoriassecrects.com> and <victoriasecretrs.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the <victoriassecrects.com> and <victoriasecretrs.com> domain names. Once a complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to a respondent to prove that it does have such rights or interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006):
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case under this head of the Policy. Therefore, and because respondent has failed to respond to the Complaint filed in this proceeding, we may infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <victoriassecrects.com> and <victoriasecretrs.com> domain names, and that Respondent is not affiliated with Complainant, and that Complainant has not authorized Respondent to use Complainant’s VICTORIA’S SECRET mark. Moreover, the pertinent WHOIS information identifies the domain name registrant only as “Privacyprotect.org / Domain Admin,” which does not resemble the disputed domain names. On this record, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in either of the domains as provided in Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in them under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and so had no rights to or legitimate interests in that domain, where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <victoriassecrects.com> and <victoriasecretrs.com> domain names, in that the domain names resolve to a third-party website, <my-lingerie-store-online.com>, which purports to offer visitors a $500 gift card for Complainant’s stores in exchange for providing a mobile phone number and personal information, as well as for providing further personal information in connection with a series of offers from businesses unrelated to Complainant. In the circumstances here presented, we may comfortably presume that Respondent benefits commercially from this use of the domains by receiving affiliate fees from the owners of the <my-lingerie-store-online.com> website. This use of the domains is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003):
Diverting customers, who are looking for products relating to the … mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).
Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered and uses the domain names <victoriassecrects.com> and <victoriasecretrs.com>, which are confusingly similar to Complainant’s VICTORIA’S SECRET trademark, to create, and profit from, confusion among Internet users as to the possibility of Complainant’s affiliation with the domains. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv). See, for example, Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that a respondent came within the provisions of Policy ¶ 4(b)(iv) because that respondent used a complainant’s mark in a domain name to attract Internet users to that respondent's website); see also 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 a respondent diverted Internet users searching for a complainant’s website to its own website, likely profiting in the process).
It is also evident that Respondent registered and uses the disputed domain names with knowledge of Complainant and its rights in the VICTORIA’S SECRET trademark. This is evidence of bad faith registration and use of the domains under Policy ¶ 4(a)(iii). See, for example, Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (finding that where circumstances indicate that a respondent had actual knowledge of a complainant’s mark when it registered a domain name, bad faith can be found); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <victoriassecrects.com> and <victoriasecretrs.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 7, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page