national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. MGA / MGA MGA

Claim Number: FA1110001410010

 

PARTIES

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 MGA / MGA MGA (“Respondent”), Turkey.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretmagaza.com>, registered with Name.com Llc.

 

PANEL

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.

 

PROCEDURAL HISTORY

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, Name.com Llc confirmed by e-mail to the National Arbitration Forum that the <victoriassecretmagaza.com> domain name is registered with Name.com Llc and that Respondent is the current registrant of the name.  Name.com Llc has verified that Respondent is bound by the Name.com Llc 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@victoriassecretmagaza.com.  Also on October 6, 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <victoriassecretmagaza.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 <victoriassecretmagaza.com> domain name.

 

3.    Respondent registered and used the <victoriassecretmagaza.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., registered 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).  Complainant uses its VICTORIA’S SECRET mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.

 

Respondent, MGA / MGA MGA, registered the <victoriassecretmagaza.com> domain name on December 29, 2010.  The disputed domain name resolves to a website that contains a picture of one of Complainant’s models and the statement: “VICTORIA’S SECRET Magazasi Yakinda Aciliyor,” which translates to “VICTORIA’S SECRET Store Opening Soon” in English. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. 

 

The first element of the Panel’s Policy ¶ 4(a)(i) analysis is to determine whether or not Complainant owns rights in the VICTORIA’S SECRET mark.  In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006), the panels found that a trademark registration with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).  According to Complainant, Complainant began selling its products on June 12, 1977 under the VICTORIA’S SECRET mark.  Complainant provides evidence of its trademark registrations with the USPTO for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).  However, Respondent resides in Turkey and not the United States.  In Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), and Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007), the panels concluded that it did not matter whether a respondent resides or operates in a country in which the complainant owns a trademark registration because it only matters, under Policy ¶ 4(a)(i), whether the complainant owns a national trademark.  Thus, the Panel concludes that Complainant has satisfied this portion of Policy ¶ 4(a)(i) and has established rights in its VICTORIA’S SECRET mark.

 

The second element of Policy ¶ 4(a)(i) requires Complainant to demonstrate that the disputed domain name is either identical or confusingly similar to Complainant’s mark.  Complainant contends that Respondent’s <victoriassecretmagaza.com> domain name contains Complainant’s VICTORIA’S SECRET and only alters the mark by removing the space and apostrophe from the mark and adding the generic term “magaza,” which means “store” in Turkish, and the generic top-level domain (“gTLD”) “.com.”  In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panels found that the removal of a space and the addition of a gTLD  are irrelevant to a Policy ¶ 4(a)(i) analysis.  Further, panels, in Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000), and Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), determined that the removal of an apostrophe did not remove the disputed domain name from the realm of confusing similarity.  Lastly, in Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000), and Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004), the panels concluded that the addition of a generic term failed to adequately distinguish the disputed domain name from the complainant’s mark.  Based on this precedent, the Panel finds that Respondent’s <victoriassecretmagaza.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).

 

The Panel determines that both elements of Policy ¶ 4(a)(i) have been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name.  In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <victoriassecretmagaza.com> domain name.  The burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  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.”).  The Panel finds Complainant made a sufficient prima facie case.  A respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name.  See 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).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

The Panel first analyzes whether Respondent is commonly known by the <victoriassecretmagaza.com> domain name.  In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant asserts that the respondent is not authorized to use the complainant’s mark, and the respondent fails to present any evidence in support of a commonly known by finding.  The WHOIS information identifies the registrant of the <victoriassecretmagaza.com> domain name as “MGA / MGA MGA.”  Complainant claims that it has not licensed or permitted Respondent to use Complainant’s VICTORIA’S SECRET mark.  Respondent has not responded to this case and has not presented any evidence that it is commonly known by the disputed domain name.  Based on this UDRP precedent and the evidence in the record, the Panel finds that Respondent is not commonly known by the <victoriassecretmagaza.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

The Panel next analyzes whether Respondent is making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  Prior panels, in Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002), and Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), determined that a respondent failed to make an active use of the disputed domain name when the domain name resolved to an “under construction” page and that this inactive use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.  According to the screen shots of the website resolving from the <victoriassecretmagaza.com> domain name and Complainant’s allegations, Respondent uses the disputed domain name to provide a picture of one of Complainant’s models and the phrase “VICTORIA’S SECRET Magazasi Yakinda Aciliyor,” which translates to “VICTORIA’S SECRET Store Opening Soon.”  The Panel finds a similarity between Respondent’s use of the disputed domain name and an “Under Construction” page.  Therefore, based on that similarity and the fact that the resolving website does not contain any original content, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain.

 

As the Panel concludes that Respondent has failed to meet any of the Policy ¶ 4(c) elements, the Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith.  Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.  The Panel notes that the examples of bad faith registration and use prescribed in Policy ¶ 4(b) are intended to be illustrative and not exhaustive.  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith)   Thus, the Panel may find bad faith beyond the perimeters of Policy ¶ 4(b).  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).    

 

In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), past panels found bad faith registration and use of a disputed domain name when the disputed domain name resolved to an inactive website.  The Panel previously found that Respondent has failed to make an active use of the <victoriassecretmagaza.com> domain name and, therefore, finds that Respondent registered and uses the <victoriassecretmagaza.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel determines that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoriassecretmagaza.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 16, 2011

 

 

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