Victoria's Secret Stores Brand Management, Inc. v. Robinson Arias
Claim Number: FA1109001409696
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 Robinson Arias (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lenceriavictoriassecret.com>, registered with Moniker.
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 30, 2011; the National Arbitration Forum received payment on September 30, 2011.
On October 4, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the <lenceriavictoriassecret.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 October 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 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@lenceriavictoriassecret.com. Also on October 5, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 31, 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 <lenceriavictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’s SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <lenceriavictoriassecret.com> domain name.
3. Respondent registered and used the <lenceriavictoriassecret.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., sells women’s lingerie and apparel, personal care and beauty products, swimwear, and outerwear. Complainant claims rights in the VICTORIA’S SECRET mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Robinson Arias, registered the disputed domain name on December 30, 2010. The disputed domain name resolves to a website featuring a number of clickable search terms which lead to sponsored advertisements for third-parties, including advertisements for competitors of 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 claims rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). Complainant has provided evidence of its registration of the mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). Previous panels have found that registration of a mark with the USPTO is sufficient to confer rights in a mark. See 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.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel finds that Complainant has established rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lenceriavictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, while adding the generic term “lenceria,” which is Spanish for lingerie, affixing the generic top-level domain (“gTLD”) “.com,” and deleting the apostrophe and space between the words found in Complainant’s mark. The addition of a descriptive Spanish word to Complainant’s mark does not distinguish the disputed domain name under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Additionally, the omission of the apostrophe and the space between the words found in Complainant’s mark does not defeat a confusingly similar claim. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). Finally, the affixation of a gTLD also does not distinguish a domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes, therefore, that Respondent’s <lenceriavictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
Complainant has the initial burden of presenting a prima facie case. Once this requirement has been satisfied, as it has been here, the burden then shifts to Respondent to present a Response rebutting Complainant’s claims. See 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). Where a Respondent fails to produce a Response, as here, some panels have inferred an admission that Respondent lacks rights or legitimate interests in the disputed domain name. 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). In the interest of fairness, however, the Panel will continue to examine the record to determine whether such rights or legitimate interest do exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <lenceriavictoriassecret.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Robinson Arias,” which the Panel finds to bear no resemblance to the disputed domain name. Complainant also states that it has not authorized Respondent to use its mark in any way, including the registration of the disputed domain name. Absent the filing of a Response, there is no evidence in the record that Respondent is commonly known by the disputed domain name. Without such evidence, the Panel finds that Respondent is not commonly known by the <lenceriavictoriassecret.com> domain name for the purposes of Policy ¶ 4(c)(ii). See 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); 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 further alleges that Respondent’s use of the disputed domain name does not coincide with 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). Respondent’s domain name resolves to a website featuring a number of clickable search terms which lead to sponsored advertisements for third-parties, including advertisements for competitors of Complainant. Previous panels have failed to find rights or legitimate interests in similar situations. 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 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)). The Panel concludes that Respondent’s use of the disputed 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).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Complainant urges that Respondent’s registration and use of the disputed domain name represents bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s operation at a confusingly similar domain name will likely lead some Internet users to visit Respondent’s website, when in fact they had intended to visit Complainant’s. Inevitably, a portion of these misdirected users will access the competing links displayed on Respondent’s page. The Panel finds that this type of misdirection constitutes bad faith disruption of Complainant’s business 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Finally, Complainant believes that Respondent’s registration and use of the <lenceriavictoriassecret.com> domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Through the use of a confusingly similar domain name, Respondent creates a likelihood of confusion with Complainant and its products in an attempt to deceive consumers into mistakenly believing that Respondent is affiliated with Complainant’s business in some way. The Panel assumes that Respondent collects click-through fees each time one of the links on its site is accessed, thereby making the site economically viable. In this way, Respondent seeks to realize a commercial gain through the confusion it creates. The Panel finds that this type of business model constitutes bad faith attraction for commercial gain under 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 Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lenceriavictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 14, 2011
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