Victoria's Secret Stores Brand Management, Inc. v. Marathon Media / Jennifer Karnazes
Claim Number: FA1109001407282
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 Marathon Media / Jennifer Karnazes (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretoffercode.com>, registered with Fabulous.com Pty Ltd.
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.
Mr Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2011; the National Arbitration Forum received payment on September 14, 2011.
On September 14, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <victoriassecretoffercode.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@victoriassecretoffercode.com. Also on September 16, 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 23, 2011.
On September 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant states that it is the United States record owner of the VICTORIA’S SECRET trademarks and service marks, which it licenses to other subsidiaries of Limited Brands. The Complaint is based upon the trademark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainant, its licensees and 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, outerwear and gift cards.
According to the Complainant, VICTORIA’S SECRET is used as the name of more than 1,000 stores located throughout the United States. In 2010, more than $5.5 billion of merchandise was sold in connection with or bearing the VICTORIA’S SECRET trademark. The trademark has been prominently used on the Internet since at least 1998, in connection with Complainant’s goods at Complainant’s web site <victoriassecret.com>. The Complainant first registered this domain name on January 23, 1995.
Additionally, the trademark VICTORIA’S SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows. In February 1999, Complainant launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was shattered on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the show.
The Complainant concludes that, as a result of this widespread, long-time, continuous and prominent use, the VICTORIA’S SECRET trademark have acquired significant goodwill, wide public recognition, and fame.
The disputed domain name is confusingly similar to the Complainant’s trademark VICTORIA’S SECRET, as it incorporates the trademark in its entirety (absent the apostrophe and space, which cannot be included in a domain name), and merely appends generic terms “offer code” to the mark.
The Complainant claims that the Respondent has no rights or legitimate Interests in <victoriassecretoffercode.com>. The domain name resolves to a web site prominently displaying an image containing the text “GET A FREE $500 VICTORIA’S SECRET GIFT CARD.” The site solicits personal information and requires users to complete sponsor offers from businesses unrelated to Complainant. On information and belief, the Respondent receives affiliate fees when visitors subscribe to one of the offers, or otherwise commercially benefits from this use of the domain name.
The Respondent is not affiliated with the Complainant; nor has the Respondent been licensed or permitted to use the VICTORIA’S SECRET trademarks in domain names, on any web site, or in any other manner.
The Respondent registered <victoriassecretoffercode.com> more than thirty-three years after the Complainant began using its VICTORIA’S SECRET trademarks; more than fifteen years after the Complainant registered the domain name <victoriassecret.com> for its e-commerce web site; and long after the VICTORIA’S SECRET trademarks became famous.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith, as the Respondent is using the Complainant’s trademark in the domain name to drive traffic to the site, which is not owned or authorized by the Complainant and which promotes businesses unrelated to the Complainant. It is clear from the content of the site that the Respondent was aware of the Complainant’s trademark when the Respondent registered the disputed domain name.
B. Respondent
The Respondent claims that the disputed domain name was registered as a result of a “computer program automatically”, and that the program malfunctioned as it was not the Respondent’s intention to own a domain name with the words “Victoria’s secret” in them, rather just the words “secret” “offer” and “code”, as in “secret offer code”. The Respondent became aware of the disputed domain name upon receipt of the Complaint.
The Respondent asserts that it is not Respondent’s intention to infringe on the Complainant’s trademark, that any pages that resolved on the domain name were a result of an automatically propagating advertisement program from a third party that the Respondent used.
The Respondent asserts that - as of the date of the Complaint - the disputed domain name was disabled, and further that the Respondent will completely comply with any wishes on the part of the Complainant and transfer the domain name.
The Panel finds that the Complainant has established extensive trademark rights in the VICTORIA’S SECRET trademark, as shown by Exhibit C of the Complaint. Further, the Panel agrees with the Complainant’s statement that the VICTORIA’S SECRET trademark is well known for certain goods.
The Respondent registered <victoriassecretoffercode.com> on March 24, 2011.
According to Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), “a Panel shall 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 this case, the Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer <victoriassecretoffercode.com> to the Complainant, claiming that the Respondent was not even aware of the domain name until the Complainant was filed.
Therefore, under these special circumstances, the Panel decides to forego the traditional UDRP analysis, not to make any further findings or discussion, and instead order an immediate transfer of the disputed domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretoffercode.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 10, 2011
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