Victoria's Secret Stores Brand Management, Inc. v. Levan Odilavadze
Claim Number: FA1109001407499
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 Levan Odilavadze (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriasecretoffercode.com> and <victoriasecretpromocodes.com>, registered with GoDaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the National Arbitration Forum received payment on September 15, 2011.
On September 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> 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 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@victoriasecretoffercode.com, postmaster@victoriasecretpromocodes.com. Also on September 15, 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 October 13, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <victoriasecretoffercode.com> and <victoriasecretpromocodes.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 <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> domain names.
3. Respondent registered and used the <victoriasecretoffercode.com> and <victoriasecretpromocodes.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 the owner of the VICTORIA’S SECRET mark which it uses in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant has several 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, Levan Odilavadze, registered the <victoriasecretoffercode.com> domain name on April 10, 2011. Respondent registered the <victoriasecretpromocodes.com> domain name on March 21, 2011. Both of the disputed domain names resolve to Respondent’s website, which features links and pay-per-click advertisements, as well as purports to offer a gift card in exchange for completing a survey requesting personal information and participation in sponsor offers from businesses unrelated to Complainant.
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 contends that it has rights in the VICTORIA’S SECRET mark. In cases such as Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), panels have held that registration with a federal trademark authority establishes the complainant’s rights in its mark. Complainant has provided the Panel with evidence of its registrations with the USPTO for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). The Panel finds that Complainant has rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> domain names are confusingly similar to its mark. The Panel finds that Respondent’s deletion of the space between words in the mark as well as the addition of the generic top-level domain (“gTLD”) “.com” fails to distinguish the domain name from Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also 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). Additionally, the Panel finds that Respondent’s deletion of the apostrophe in Complainant’s mark is similarly insignificant. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); 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). Respondent also deletes the letter “s” in each of the domain names. The Panel finds that the deletion of one letter of a mark within a domain name is insufficient to distinguish the domain name from the complainant’s mark. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Lastly, Respondent’s addition of one or more of the generic terms “offer,” “code,” and “promo” does not differentiate the <victoriasecretoffercode.com> and <victoriasecretpromocode.com> domain names from Complainant’s VICTORIA’S SECRET mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Therefore, the Panel finds that the <victoriasecretoffercode.com> and <victoriasecretpromocode.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(i).
Complainant argues that Respondent has neither rights nor legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case in support of this claim. As such, the burden shifts to Respondent to dispute the claims laid against it. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Respondent, however, did not submit to the Panel a response. Therefore, the Panel infers from the available information that Respondent has no rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel will nevertheless review the record according to the Policy ¶ 4(c) factors for information suggesting the Respondent has rights and legitimate interests.
Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS listing for both domains lists “Levan Odilavadze” as the domain name registrant. This registrant name, the Panel finds, fails to reflect in any sense the disputed domain names. Additionally, Complainant contends that Respondent has not been authorized, licensed, or in any way been permitted to use the VICTORIA’S SECRET mark. The Panel thus finds that Respondent is not commonly know by either the <victoriasecretoffercode.com> domain name or the <victoriasecretpromocodes.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> domain names in a manner which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The disputed domain names both resolve to Respondent’s website, which purports to offer a free gift card for the completion of a survey and other unrelated business sponsor offers. Past panels have held that the use of a disputed domain name fails to satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii) where the domain name purports to give gift cards to Internet users who complete online surveys. See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that Respondent lacked rights and legitimate interests where the disputed domain name was used to solicit the completion of a survey by Internet users by offering a gift card for Complainant’s products); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the Respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent’s use of the disputed domain names fails to fall within the scope of protected uses under Policy ¶¶ 4(c)(i) and 4(c)(iii) and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(ii).
The disputed domain names, having been found confusingly similar to Complainant’s VICTORIA’S SECRET mark, create initial confusion as to their possible sponsorship by Complainant and relation to Complainant’s VICTORIA’S SECRET mark. Some of the Internet traffic reaching Respondent’s domain names will believe that the disputed domain names are affiliated with Complainant and will therefore complete the surveys and third-party offers believing that the surveys and offers are approved by Complainant. The Panel infers, however, that Respondent is receiving compensation from the businesses to which it connects the deceived Internet users who participate in the offers. As such, the Panel finds that Respondent’s registration and use of the <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> domain names intends to attract Internet users to the domain names for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the affiliation of Respondent’s domain names, which shows bad faith under Policy ¶ 4(b)(iv). See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a disputed domain name offers incentives for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant[,] [which] is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Above.com Domain Privacy, FA 1393078 (finding that a domain name which resolves to a website that solicits Internet users for the completion of surveys is evidence of bad faith due to an attraction for commercial gain).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretoffercode.com> and <victoriasecretpromocodes.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 26, 2011
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