Victoria's Secret Stores Brand Management, Inc. v. Privacy Protect / Privacy Protection
Claim Number: FA1108001404667
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 Privacy Protect / Privacy Protection (“Respondent”), represented by Kathleen S. Ryan of The Ollila Law Group LLC, Lafayette, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretc.com> (the “Disputed Domain Name”), registered with Dynamic Dolphin, 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.
Douglas M. Isenberg 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 29, 2011, Dynamic Dolphin, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretc.com> domain name is registered with Dynamic Dolphin, Inc. and that Respondent is the current registrant of the name. Dynamic Dolphin, Inc. has verified that Respondent is bound by the Dynamic Dolphin, 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 August 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 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@victoriasecretc.com. Also on August 30, 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.
A timely Response was received and determined to be complete on September 19, 2011.
On September 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, in relevant part, that:
1. The Disputed Domain Name is confusingly similar to the trademark VICTORIA’S SECRET – which has been used by Complainant or its predecessors since at least as early as June 12 1977, in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear, and is protected by 28 registrations at the U.S. Patent and Trademark Office, including U.S. Reg. No. 1,146,199 – because “[b]y registering a Domain Name that merely adds or subtracts one or two letters to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves.”
2. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET Marks”; “Respondent is using the Domain Name to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site” by offering gift cards at a website using the Disputed Domain Name; “Respondent is not commonly known by the Domain Name”; “Respondent registered the Domain Name more than twenty-eight years after Complainant began using its VICTORIA’S SECRET Marks”; and “Respondent is not making a legitimate noncommercial or fair use of the Domain Name.”
3. The Disputed Domain Name was registered and is being used in bad faith because “Respondent is using Complainant’s VICTORIA’S SECRET mark in the Domain Name to drive traffic to… Gift Card Sites” (that is, websites offering visitors free gift cards, including gift cards associated with Complainant); by using the Disputed Domain Name in such manner, Respondent “creates a likelihood of confusion by leading visitors to believe, incorrectly, that the Gift Card Site and its offers are affiliated with, endorsed or sponsored by Complainant”; and “there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s famous VICTORIA’S SECRET mark.”
B. Respondent
Respondent contends, in relevant part, that it “did not acquire the domain name in bad faith and such acquisition occurred as part of a bulk name transfer. Nevertheless, the Disputed Domain is not critical to Respondent's business and in the interest of saving the costs involved in defending its rights to the Disputed Domain, including, but not limited to, our rejected settlement offer of September 12, 2011 to transfer the Disputed Domain to Complainant at no cost -- Respondent stipulates for the Panel to transfer the Disputed Domain to Complainant.” Respondent further contends that, “Where a respondent stipulates to transfer a domain name to a complainant, the panel need only transfer the domain name, without issuing an opinion on the merits of the case.”
Based on undisputed evidence, the Panel finds that Complainant has rights in and to the trademark VICTORIA’S SECRET, as described more fully above, which was first used at least as early as June 12 1977; the Disputed Domain Name was created on September 22, 2006; and the Disputed Domain Name is being used in connection with a website that offers visitors gift cards, including a “Free $1,000 Victoria’s Secret Gift Card.”
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."
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.
Procedural Issue
Before proceeding to the merits of this dispute, the Panel first addresses the issue of Respondent’s request to transfer the Disputed Domain Name to Complainant “without issuing an opinion on the merits of the case.” While this Panel recognizes that other Panels have done so, this Panel refuses to order a transfer under such conditions – and, in any event, the Panel is aware of no authority that would require it to do so. Indeed, this Panel believes that, in light of the time and expense incurred by Complainant, “the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.” See Graebel Van Lines, Inc. v. Texas International Property Associates - NA NA, FA 1195954 (Nat. Arb. Forum July 17, 2008); see also Danware Data A/S v. Texas International Property Associates, WIPO Case No. D2007-0945 (WIPO Oct. 10, 2007) (where “the Complainant has been put to the time and expense of instructing its lawyers and paying for [a] decision,” then “the most appropriate way to proceed” is for a panel “to consider the three elements necessary under paragraph 4(a) since the Respondent has not made any admissions,” in part “because the purpose of the URDP is to deter people from profiting from the business success of others”).
Based upon the trademark registrations cited by Complainant (including U.S. Reg. No. 1,146,199) it is apparent that Complainant has rights in the trademark VICTORIA’S SECRET. This finding is consistent with numerous previous panels that also have considered the same trademark, including (just to cite two of many such decisions), Victoria's Secret Stores Brand Management, Inc. v. Collins Paris, NAF Claim No. 1405130 (transfer of <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net>); and Victoria’s Secret Stores Brand Management, Inc. v. PrivacyProtect.org c/o Domain Admin, NAF Claim No. 1357512 (transfer of <victoriasecret-tr.com>).
As to whether the Disputed Domain Name is identical or confusingly similar to the VICTORIA’S SECRET trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “victoriasecretc”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
The Panel agrees with the previous decisions under the Policy cited by Complainant also relating to the VICTORIA’S SECRET trademark, that “the overall impression of the mark has not changed” despite slight differences between the relevant disputed domain name and trademark. Victoria's Secret et al v Diego Decal, NAF Claim No. 96539 (transfer of <evictoriasecrets.com>).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET Marks”; “Respondent is using the Domain Name to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site” by offering gift cards at a website using the Disputed Domain Name; “Respondent is not commonly known by the Domain Name”; “Respondent registered the Domain Name more than twenty-eight years after Complainant began using its VICTORIA’S SECRET Marks”; and “Respondent is not making a legitimate noncommercial or fair use of the Domain Name.”
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy ¶ 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name is being used in connection with a website that offers visitors gift cards, including a “Free $1,000 Victoria’s Secret Gift Card.” This is nearly identical to a previous decision involving Complainant, in which a respondent used a domain name in connection with a website offering “gift cards in exchange for personal information and promoting goods unrelated to Complainant is evidence of bad faith.” There, the panel said that it “finds that Respondent’s use of the disputed domain name to commercially benefit is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Victoria’s Secret Stores Brand Management, Inc. v. Marek Sanders, NAF Claim No. 1288579. See also Wikimedia Foundation Inc. v. Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0911 (finding bad faith where respondent used the disputed domain name in connection with a website “that offers a social survey in return for which prizes are offered”).
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretc.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: September 30, 2011
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