Victoria's Secret Stores Brand Management, Inc. v. Bill
Claim Number: FA1109001409148
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 Bill (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecret-creditcard.info>, registered with Dynadot.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2011; the National Arbitration Forum received payment on September 27, 2011.
On September 27, 2011, Dynadot confirmed by e-mail to the National Arbitration Forum that the <victoriasecret-creditcard.info> domain name is registered with Dynadot and that Respondent is the current registrant of the name. Dynadot has verified that Respondent is bound by the Dynadot 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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@victoriasecret-creditcard.info. Also on September 28, 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 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecret-creditcard.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecret-creditcard.info> domain name.
3. Respondent registered and used the <victoriasecret-creditcard.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., operates more than 1,000 retail stores throughout the United States under the VICTORIA’S SECRET mark. Complainant uses its mark to market and sell women’s lingerie, personal care and beauty products, swimwear, outerwear, as well as other goods. Complainant submits trademark certificates indicating that it owns several registrations with the United States Patent and Trademark Office ("USPTO") for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Bill, registered the <victoriasecret-creditcard.info> domain name on May 17, 2011. Respondent’s disputed domain name resolves to a website which prominently displays a VICTORIA’S SECRET shopping bag and displays various generic posts on many subjects, all of which are surrounded by pay-per-click advertisements from Google’s AdSense program.
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.
There are two elements that a complainant must fulfill under Policy ¶ 4(a)(i):
1. Complainant has rights in a mark; and
2. the disputed domain name is confusingly similar to such mark.
In this capacity Complainant has submitted several trademark registrations that it owns with the USPTO, including those for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). The Panel finds that such evidence is sufficient to find that Complainant has rights in the mark under Policy ¶ 4(a)(i). See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant contends that the <victoriasecret-creditcard.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Complainant notes that the domain name utilizes a version of its mark which omits the space between the terms, the apostrophe and the letter “s.” Further, the domain name adds a hyphen, the generic terms “credit” and “card,” and the generic top-level domain (“gTLD”) “.info.” The Panel finds that such omissions and additions to Complainant’s mark are not sufficient to remove the domain name from the realm of confusing similarity under Policy ¶ 4(a)(i). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Maloca, FA 1398770 (Nat. Arb. Forum August 24, 2011) (finding that the “elimination of the space between the words in Complainant’s mark, removal of the apostrophe, addition of the hyphen, and addition of the generic top-level domain (“gTLD”) ‘.info’ all together fail to distinguish the disputed domain name and Complainant’s mark.”); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Marz, FA 1394274 (Nat. Arb. Forum July 21, 2011) (finding that the removal of the apostrophe, letter “s,” and space between the terms of the mark, as well as the addition of two generic terms and a gTLD to the VICTORIA’S SECRET mark, does not “alleviate the confusing similarity between [the] mark and the disputed domain name”.).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <victoriasecret-creditcard.info> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fan 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.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not affiliated with Complainant and has not been granted permission to use Complainant’s marks in any way. The WHOIS information identifies the domain name’s registrant as “bill,” which in no way resembles the <victoriasecret-creditcard.info> domain name. Based upon the WHOIS information and the unrefuted arguments of Complainant, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that the domain name at issue resolves to a website that features an image of a VICTORIA’S SECRET shopping bag and generic posts on a variety of subjects, all of which are surrounded by pay-per-click advertisements from Google’s AdSense program. Complainant asserts that Respondent benefits from the links on its website every time a confused Internet user clicks on one of the links. The Panel finds that such use of a confusingly similar domain name 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has presented evidence to show that Respondent is using the disputed domain name to collect click-through revenue through its usage of Google AdSense advertisements on the resolving website. The Panel finds that Respondent registered and uses the <victoriasecret-creditcard.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant also argues that the content of Respondent’s website makes it clear that Respondent knew of Complainant and its rights in the VICTORIA’S SECRET mark when it registered the domain name. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. 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). In this case, the Panel finds that Respondent had actual knowledge of Complainant and thus registered the domain name in bad faith pursuant to 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 <victoriasecret-creditcard.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 7, 2011
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