Victoria's Secret Stores Brand Management, Inc. v. Above.com Domain Privacy
Claim Number: FA1110001410009
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 Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com>, registered with Above Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard 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 6, 2011, Above Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com> domain names are registered with Above Pty Ltd and that Respondent is the current registrant of the names. Above Pty Ltd has verified that Respondent is bound by the Above 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 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@victoriasecretclearance.com, postmaster@victoriassecrecet.com, and postmaster@fvictoriassecret.com. 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 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the owner of the VICTORIA’S SECRET trademark, which it uses in connection with the sale of a women’s lingerie, apparel, beauty products, personal care products, swimwear, outerwear and gift cards.
Complainant has registrations on file with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET trademark (including Reg. No. 1,146,199, registered January 20, 1981).
Respondent registered the <victoriasecretclearance.com> domain name on February 24, 2011; the <victoriassecrecet.com> domain name on May 3, 2009; and the <fvictoriassecret.com> domain name on July 13, 2010.
Each of the disputed domain names resolves to different third-party websites at different times.
Some of these third-party websites divert Internet users to a website which offers a Victoria’s Secret gift card in exchange for personal information, while others display links to the websites of Complainant’s business competitors’.
The <fvictoriassecret.com> domain name sometimes resolves to a website devoted to <yellowpages.com> and its “deal of the day”.
Respondent’s <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not affiliated with Complainant or its VICTORIA’S SECRET trademark in any way, and Respondent is not authorized to use the mark.
Respondent is not commonly known by any of the disputed domain names.
Respondent does not have any rights to or legitimate interests in the domain names <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com>.
Respondent both registered and uses each of the three disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations).
Complainant’s rights in its mark satisfy the Policy notwithstanding that the mark has been registered in a jurisdiction other than that where Respondent is located. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether a complainant has registered its trademark in the country of a respondent’s residence).
Each of the <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com> domain names is confusingly similar to the VICTORIA’S SECRET mark. Each of the domains incorporates Complainant’s mark with one of more of the following changes: the addition of a generic top-level domain (“gTLD”), the deletion of a space, the deletion of an apostrophe, the addition or deletion of one or more letters, and the addition of a generic term related to Complainant’s business.
The addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.
See also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in forming a domain name is insufficient to differentiate the domain from the mark under the standards of the Policy).
Similarly, the deletion of a space and an apostrophe from each domain name makes no difference to a Policy ¶ 4(a)(i) analysis because spaces and apostrophes are not permitted in a domain name. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the question of similarity as between a domain name and a mark).
Likewise, the addition to or deletion of a letter from the mark of another in creating a domain name fails to distinguish the domain name from the mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
Moreover, the addition of a generic term to the mark of another in forming a domain name fails to differentiate the domain from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where a domain name contained the complete mark of a complainant combined with a generic word or term); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the domain name <westfieldshopping.com> confusingly similar to the WESTFIELD mark).
Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent has neither rights to nor legitimate interests in the disputed domain names. Once Complainant has made out a prima facie case in support of this contention, the burden shifts to Respondent to provide evidence to the contrary. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
To the same effect, see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008).
Complainant has met its prima facie burden under this head of the Policy. Respondent’s failure to submit a Response to the Complaint therefore permits us to conclude that it has no rights to or legitimate interests in the contested domain names. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000):
[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.
See also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not affiliated with Complainant or its mark and that Respondent is not authorized to be using the VICTORIA’S SECRET trademark in any way, and that Respondent is not commonly known by any of the disputed domain names. Moreover, the WHOIS record for each of the disputed domain names lists the domain name registrant only as “Above.com Domain Privacy”, which does not resemble any of the domain names. On this record, we conclude that Respondent is not commonly known by any of the disputed domain names so as to have demonstrated that it has rights or legitimate interests in any of them as contemplated in Policy ¶ 4(c)(ii). See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), in which panels held that the determination of whether a respondent is commonly known by a disputed domain name, and so has rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), can be determined by reviewing the information that Complainant provides as well as by a review of the WHOIS record for the domain.
We next observe that Complainant contends, without objection from Respondent, that the disputed domain names resolve to websites carrying links to third-party websites marketing products in competition with the business of Complainant. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domains under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), and Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), each holding that the use of the mark of another to create a domain name which is used to display links to a website operating in competition with the business of the mark holder demonstrates that a respondent lacks rights to and legitimate interests in the domain.
Complainant also points to Respondent’s use of the <fvictoriassecret.com> domain name to resolve to a <yellowpages.com> “deal of the day” website as evidence of Respondent’s lack of rights to or legitimate interests in that domain name. Again, Respondent does not deny this contention. In the circumstances here presented, we may comfortably presume that Respondent receives revenue from this use of the domain. Respondent’s use of the <fvictoriassecret.com> domain name in this manner is 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). See Imation Corp. v. Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or legitimate interest in a contested domain name where a respondent used it to redirect Internet users to the website of an online casino); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003):
Diverting customers, who are looking for products relating to the … mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).
Further, Complainant asserts, without objection from Respondent, that Respondent’s use of the disputed domain names to offer a Victoria’s Secret gift card in exchange for the personal information of Internet users is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. We concur. Such use is deemed an illicit “phishing” scheme and stands as evidence that Respondent has no rights to or legitimate interests in the disputed domain names. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Respondent’s use of the disputed domain names to redirect Internet users to a website which is running a phishing scheme is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the disputed domain names, as alleged in the Complaint, is disruptive to Complainant’s business and evidences bad faith registration and use of the domains under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panels finding that the use of a disputed domain name to display links to third-party websites, which compete with the business of a complainant, is a disruptive use and demonstrates that a respondent’s registration and use of the domain name in bad faith.
It is apparent that Respondent has registered and uses the disputed domain names, which are confusingly similar to Complainant’s VICTORIA’S SECRET trademark, to create and take commercial advantage of Internet users’ confusion as to the possibility of Complainant’s affiliation with the resolving websites. That Respondent does this for its evident commercial gain stands as evidence that it has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website that offered links to third-party websites featuring services similar to those of a complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <victoriasecretclearance.com>, <victoriassecrecet.com>, and <fvictoriassecret.com> be TRANSFERRED
forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 8, 2011
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