Victoria's Secret Stores Brand Management, Inc. v. Privacyprotect.org / Domain Admin
Claim Number: FA1108001404666
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 NAME
The domain names at issue are <victoriasecreat.com>, registered with Power Brand Center Corp., and <victoriasecred.com>, registered with, Registermatrix.com Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 31, 2011, Registermatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecred.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”).
After numerous requests, the Registrar, Power Brand Center Corp., has not confirmed to the National Arbitration Forum that the <victoriasecreat.com> domain name is registered with Power Brand Center Corp. or that the Respondent is the current registrant of the name. Power Brand Center Corp.’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. In that communication, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecreat.com> domain nam is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@victoriasecreat.com and postmaster@victoriasecred.com. Also on September 15, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecreat.com> and <victoriasecred.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecreat.com> and <victoriasecred.com> domain names.
3. Respondent registered and used the <victoriasecreat.com> and <victoriasecred.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., is a retailer of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns several trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Privacyprotect.org / Domain Admin, registered the <victoriasecreat.com> domain name on July 8, 2007 and the <victoriasecred.com> domain name on October 8, 2005. The disputed domain names previously redirected consumers to a website at the <my-lingerie-store-online.com> domain name that purportedly offered a $500 VICTORIA’S SECRET gift card in exchange for providing personal information and completing a series of business offers. The <victoriasecred.com> domain name currently redirects to a pay-per-click link directory advertising various business, including some of Complainant’s competitors.
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 argues that it has rights in the VICTORIA’S SECRET mark because of its extensive trademark registration of the mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). Past panels have consistently found that USPTO trademark registration is sufficient to prove rights in a mark, even when Respondent is from a country outside the U.S. See 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 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). Based on this precedent and Complainant’s numerous trademark registrations, the Panel here concludes that Complainant has shown that is owns rights to the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <victoriasecreat.com> and <victoriasecred.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark because the disputed domain names merely make the following minor changes to Complainant’s mark: delete the space between the terms, remove the apostrophe and the final letter “s” from “victoria’s,” and add the generic top-level domain (“gTLD”) “.com.” In addition, the <victoriasecreat.com> domain name inserts the additional letter “a” into the mark and the <victoriasecred.com> domain name replaces the final letter “t” with the letter “d.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), a prior panel held that neither eliminating punctuation, such as apostrophes, nor removing spaces distinguished a disputed domain name from the mark. Panels in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006), and Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), determined that adding letters, deleting letters, and replacing one letter with a different letter likewise did not effect a meaningful change to the mark under the Policy. Finally, it has long been established that a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as seen in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). Accordingly, the Panel holds that Respondent’s <victoriasecreat.com> and <victoriasecred.com> domain names are 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.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. As Complainant has presented the prima facie case required by Policy ¶ 4(a)(ii), Respondent now has the burden of demonstrating rights and legitimate interests in the disputed domain name. Respondent, however, failed to respond to the complaint and thus has not met the burden of demonstrating rights and legitimate interests. The Panel accordingly finds that Complainant’s allegations are true and Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel elects, however, to analyze the evidence in the record according to the Policy ¶ 4(c) factors to determine whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not affiliated with Complainant and has not been permitted or licensed to use the VICTORIA’S SECRET mark in any way. Complainant also contends that neither the gift card site nor the links page is affiliated with or endorsed by Complainant. Complainant argues that Respondent is not commonly known by the disputed domain names and uses the WHOIS information, which does not reflect any association between Respondent and either disputed domain name, to support its argument. The Panel concludes that the failure of the WHOIS information to reflect that Respondent is commonly known by the disputed domain names, in the absence of other affirmative evidence, supports a finding that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See 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.”); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends that the <victoriasecreat.com> domain name currently resolves and the <victoriasecred.com> domain name previously resolved to the <my-lingerie-store-online.com> domain name, which purportedly offers visitors a $500 VICTORIA’S SECRET gift card in exchange for providing personal information and completing business offers. Complainant argues that Respondent likely receives referral fees for sending visitors to this resolving website. Complainant also argues that the <victoriasecred.com> domain name now redirects to a pay-per-click link directory, which features some links advertising Complainant’s competitors. Complainant again alleges that Respondent receives referral or pay-per-click fees from diverting Internet uses via this resolving website. The Panel finds that diverting consumers, in order to receive referral fees, to a pay-per-click link website or a website purportedly offering gift cards in exchange for personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and (iii) when the websites are hosted at a confusingly similar domain name incorporating Complainant’s mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Miller, FA 1333659 (Nat. Arb. Forum Aug. 12, 2010) (holding that Respondent’s efforts to gain referral fees by using the disputed domain name to host a website offering gift cards in exchange for personal information did not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that the <victoriasecred.com> domain name currently resolves to a pay-per-click link web directory advertising various businesses, including some that compete with Complainant. This directory web page disrupts Complainant’s business as unsuspecting Internet users are directed away from Complainant’s actual website and may follow one of the advertised links on the resolving website to arrive at one of Complainant’s competitors. The Panel finds that such efforts to disrupt Complainant’s business show bad faith registration and use according to 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 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)).
Complainant alleges that the <victoriasecred.com> domain name previously resolved and the <victoriasecreat.com> domain name currently resolves to a website seeking consumers’ personal information and participation in business offers by purportedly offering a $500 VICTORIA’S SECRET gift card. Complainant argues that Respondent likely receives referral fees for redirecting consumers to this website or otherwise commercially benefits from collecting this personal information. Complainant asserts that the use of the VICTORIA’S SECRET mark in the <victoriasecred.com> and <victoriasecreat.com> domain names is intended to attract Internet users and to mislead them as to the affiliation of the resolving website with Complainant, which thereby results in increased profits or earned fees for Respondent. The Panel finds that this effort to profit from confusion and a misuse of Complainant’s mark to attract consumers indicates bad faith registration and use according to 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 Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Complainant contends that the <victoriasecred.com> domain name currently resolves to a pay-per-click link web directory that advertises some of Complainant’s competitors, among other unrelated businesses. By displaying links that are related to Complainant’s business and products, there is a greater likelihood that the links will be of interest to Internet users arriving at the website and that the Internet users will subsequently click on one of them. Each click results in profit to Respondent by way of “click-through” fees. The Panel finds that Respondent’s efforts to increase traffic to its site and consequently profit by attracting Complainant’s customers are evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); 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).”).
Complainant argues that Respondent had actual and/or constructive notice of Complainant’s rights in the VICTORIA’S SECRET mark prior to registration of the disputed domain name. While the Panel has previously found that constructive notice is insufficient for a finding of bad faith under the Policy, the Panel finds that Respondent’s offer of Complainant’s gift card on the resolving website reveals that Respondent has actual knowledge of Complainant and its rights at the time it registered the disputed domain name. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”). The Panel accordingly finds bad faith registration and use according to Policy ¶ 4(a)(iii).
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 <victoriasecreat.com> and <victoriasecred.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 17, 2011
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