Victoria's Secret Stores Brand Management, Inc. v. Private Whois victoriasecretoffercode.org
Claim Number: FA1110001409996
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 Private Whois victoriasecretoffercode.org (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretoffercode.org>, registered with Internet.bs Corp.
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 October 3, 2011; the National Arbitration Forum received payment on October 3, 2011.
On October 4, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretoffercode.org> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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.org. Also on October 6, 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 November 2, 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 <victoriasecretoffercode.org> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretoffercode.org> domain name.
3. Respondent registered and used the <victoriasecretoffercode.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., owns multiple registrations for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981) with the United States Patent and Trademark Office (“USPTO”). The mark is used by Complainant in connection with the retail sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.
Respondent, Private Whois victoriasecretoffercode.org, registered the <victoriasecretoffercode.org> domain name on April 11, 2011. The disputed domain name resolves to a website which displays a link to a $1,000 Victoria’s Secret gift card offer but which actually links to a third-party website for affiliate marketing.
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 has provided the Panel with evidence of its numerous trademark registrations with the USPTO for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). While Complainant’s registration of the VICTORIA’S SECRET mark was done in a country other than that which Respondent operates, past panels have found that a complainant’s registration of a mark with a federal trademark authority is sufficient to establish rights in the mark, regardless of the location of the parties. See 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).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established its rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <victoriasecretoffercode.org> domain name is confusingly similar to Complainant’s mark. Respondent first eliminates the “s” in “VICTORIA’S” in the domain name. The Panel finds that this change is insufficient to distinguish the disputed domain name from Complainant’s mark. See 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); see also 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). Additionally, the Panel finds that Respondent’s deletion of the apostrophe in Complainant’s mark is not a distinguishing change. 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 Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark). Cases such as Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004), and Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001), hold that the addition of generic words or phrases fails to differentiate a disputed domain from the mark it is allegedly infringing. Therefore, the Panel finds that Respondent’s addition of the generic terms “offer” and “code” does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). Lastly, Respondent deleted the space in Complainant’s mark and added the generic top-level domain (“gTLD”) “.org” to Complainant’s mark in the <victoriasecretoffercode.org> domain name. The Panel finds these changes to be irrelevant to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark).
The Panel finds that Policy ¶ 4(a)(i) is met.
Before the burden shifts to Respondent to provide defensive evidence, Complainant must first make a prima facie case in support of its position. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Complainant alleges that Respondent lacks both rights and legitimate interests in the <victoriasecretoffercode.org> domain name. The Panel finds that Complainant has made a prima facie case in support of this assertion. Respondent, now bearing the burden of disproving Complainant’s claims, failed to submit a Response to the Complaint. As a result, the Panel must determine whether Respondent has rights or legitimate interests in the disputed domain name based upon the available information. 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel infers that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests but will nevertheless review the record according to the Policy ¶ 4(c) factors for evidence of Respondent’s rights or legitimate interests in the <victoriasecretoffercode.org> domain name.
Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent, Complainant claims, is in no way affiliated with, licensed by, or permitted to use the VICTORIA’S SECRET mark. The WHOIS record for the <victoriasecretoffercode.org> domain name lists “Private Whois victoriasecretoffercode.org” as the domain name registrant. Previous panels have held that, despite a WHOIS record which suggests that the Respondent is commonly known by the disputed domain name, if there is no other supporting evidence, the Panel may still find that the respondent is not commonly known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). The Panel finds that, despite the WHOIS record suggesting that Respondent may be commonly known by the disputed domain name, Respondent is not commonly known by the <victoriasecretoffercode.org> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <victoriasecretoffercode.org> domain name. The domain name resolves to a website which purports to link Internet users to a website where they can receive a $1,000 gift card to Complainant’s product but which actually diverts the users to a third-party website offering affiliated marketing services. The Panel finds that Respondent’s use of the <victoriasecretoffercode.org> domain name for purposes unrelated to Complainant is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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) is met.
Complainant claims that Respondent registered and used the disputed domain name with the intent to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s <victoriasecretoffercode.org> domain name. Complainant argues that Respondent thereby misleadingly diverts Internet traffic to the disputed domain name and website resolving from the gift card advertisement. The disputed domain name has been found to be confusingly similar to Complainant’s mark by this Panel. The Panel determines that upon searching for Complainant, Internet users who find Respondent’s domain name will believe that it is in some way affiliated with Complainant. Therefore, the Internet users who reach the disputed domain name will believe the offer for a $1,000 gift card is legitimate and click through the link to the third-party website. The Panel infers that Respondent receives compensation for the Internet users it diverts through the link. Therefore, the Panel finds that Respondent registered and uses the <victoriasecretoffercode.org> domain name to take commercial advantage of Internet users’ confusion pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) is met.
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.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 16, 2011
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