national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Collins Paris

Claim Number: FA1108001405130

 

PARTIES

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 Collins Paris (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net>, registered with Godaddy.Com, Inc.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2011; the National Arbitration Forum received payment on August 26, 2011.

 

On Aug 31, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names.  Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 September 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@victoriasecretbathingsuits.org and postmaster@victoriasecretswimsuits.net.  Also on September 1, 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 September 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.    Respondent does not have any rights or legitimate interests in the <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names.

 

3.    Respondent registered and used the <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., owns the VICTORIA’S SECRET mark and has used the mark since 1977 in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, and outerwear.  Complainant has a number of trademark registrations for its 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, Collins Paris, registered the <victoriasecretbathingsuits.org> domain name on April 13, 2011 and the <victoriasecretswimsuits.net> domain name on March 22, 2011.  The disputed domain names resolve to similar websites featuring generic articles of keywords related to Complainant and third-party advertisements, some of which link to Complainant’s competitors.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims that it has established rights in the VICTORIA’S SECRET mark.  Prior panels have consistently held that a complainant may prove rights in a mark via registration with a trademark authority.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).  Complainant has a number of trademark registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981).  The Panel concludes that Respondent has sufficiently demonstrated its rights in the VICTORIA’S SECRET mark with its USPTO trademark registrations pursuant to Policy ¶ 4(a)(i).

 

Complainant also maintains that Respondent’s <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The <victoriasecretbathingsuits.org> domain name incorporates the entire mark and changes it by deleting the letter “s” and the apostrophe, by deleting the space between the words of the mark, by adding the descriptive words “bathing suits,” and by adding the generic top-level domain (“gTLD”) “.org.”  The <victoriasecretswimsuits.net> domain name also incorporates the entire VICTORIA’S SECRET mark and alters it by deleting the letter “s,” the apostrophe, and the space between the words of the mark, and by adding the descriptive word “swimsuits” and the gTLD “.net.”  The Panel finds that deleting a single letter or an apostrophe fails to distinguish the disputed domain name from Complainant’s mark.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).  The Panel also holds that deleting spaces and adding a gTLD does not help to remove the disputed domain name from the realm of confusing similarity.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i).  Finally, the Panel finds that including descriptive words, such as “bathing suits” and “swimsuits,” which relate to Complainant’s retail business, does not avoid a finding of confusing similarity.  See 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.”).  Therefore, the Panel holds that Respondent’s disputed domain names at issue are confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). 

 

The Panel finds that Policy ¶ 4(a)(i) has been met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names.  In F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007), the panel stated, “Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”  The Panel finds that Complainant has made out a prima facie case. Respondent never submitted a response to the Complaint, which may be interpreted as an admission of having no rights or legitimate interests under Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel elects to still look at the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Moreover, Complainant argues that Respondent is not commonly know by the disputed domain names.  The WHOIS information identifies Respondent as “Collins Paris,” which is not similar to the disputed domain names.  Complainant also states that Respondent has not been given license or permission to use the VICTORIA’S SECRET mark within the disputed domain names.  Considering these facts and assertions, the Panel holds that Respondent is not commonly know by the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

 

Respondent’s disputed domain names both resolve to similar websites with generic articles loosely related to Complainant, composed of various keywords, and with links and advertisements for Complainant’s competitors in the clothing and swimwear retail business.  Respondent is believed to receive click-through fees from these third-party links.  The Panel holds that Respondent’s resolving websites which redirect Internet users to websites, including Complainant’s competitors, is 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).  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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 that Policy ¶ 4(a)(ii) has been met.

 

Registration and Use in Bad Faith

 

Although Complainant does not specifically address this argument, the Panel may consider whether Respondent’s registration and use of the disputed domain names disrupts Complainant’s retail business.  As the resolving websites both feature links and advertisements to competing businesses also selling swimwear, the Panel finds that Respondent’s disputed domain names do disrupt Complainant’s business by diverting Complainant’s potential customers and are evidence of bad faith use and registration under Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); 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).”).

 

The Panel infers that Respondent receives click-through fees from the previously mentioned third-party links.  Given Respondent’s use of confusingly similar disputed domain names, Internet users are likely to be misled as to Complainant’s sponsorship of, or affiliation with, the resolving website and featured links and advertisements.  Respondent tries to commercially benefit from this confusion by collecting click-through fees. The Panel finds that such registration and use constitutes bad faith according to Policy ¶ 4(b)(iv).  See 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); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Finally, Complainant asserts that Respondent has actual or constructive notice of Complainant’s rights in the VICTORIA’S SECRET mark through Complainant’s numerous trademark registrations with the USPTO and because of Respondent’s use of links and advertisements on the resolving website related to swimwear and Complainant’s retail business.  While prior panels have held that constructive notice of a mark is insufficient to find bad faith, the Panel holds that Respondent had actual notice of Complainant’s rights in the VICTORIA’S SECRET mark and therefore, registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoriasecretbathingsuits.org> and <victoriasecretswimsuits.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  September 29, 2011

 

 

 

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