Victoria's Secret Stores Brand Management, Inc. v. Tim Walker
Claim Number: FA1110001413379
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 Tim Walker (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecret-coupons.com>, registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 28, 2011; the National Arbitration Forum received payment on October 28, 2011.
On October 28, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecret-coupons.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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-coupons.com. Also on October 31, 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 December 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a 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-coupons.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 <victoriasecret-coupons.com> domain name.
3. Respondent registered and used the <victoriasecret-coupons.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., markets and sells women’s lingerie and other products for women through its catalogue, its website, and in retail stores. Complainant owns numerous trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995;
Reg. No. 2,455,260 registered May 29, 2001; &
Reg. No. 3,480,533 registered August 5, 2008.
Respondent, Tim Walker, registered the <victoriasecret-coupons.com> domain name on May 6, 2011. The disputed domain name resolves to a website that prominently advertises a VICTORIA’S SECRET gift card and hyperlinks related to the offer, which redirect users to a third-party website seeking personal information and participation in sponsor offers.
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.
The Panel finds that Complainant’s USPTO trademark registrations firmly establish that Complainant owns rights to the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”); 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.”).
Respondent’s <victoriasecret-coupons.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark due to the minor nature of the changes made to the mark. The disputed domain name deletes the letter “s” and the apostrophe and space between the terms, and adds a hyphen, the generic term “coupons,” and the generic top-level domain (“gTLD”) “.com.” In Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004), and Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), prior panels found that for Policy purposes, hyphens, top-level domains, punctuation, and spaces are not considered when determining confusing similarity because of the constraints of domain name formation. Previous cases have also shown that neither the addition of a generic term nor the deletion of a single letter adequately differentiates a disputed domain name from a mark. 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)); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel thus concludes that Respondent’s <victoriasecret-coupons.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent before the obligation to prove rights and legitimate interests transfers to Respondent. In this case, the Panel finds that Complainant’s allegations and supporting evidence are sufficient to form a prima facie case. Because Respondent has failed to respond, however, it has not satisfied its burden to prove rights and legitimate interests. Panel infers that Complainant’s allegations are true and that Respondent does not possess rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). The Panel will nonetheless analyze the evidence against the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests in the domain name.
Complainant asserts that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark in any way. The WHOIS record for the disputed domain name lists the registrant as “Tim Walker,” which does not suggest a connection between the disputed domain name and Respondent. The Panel therefore finds that Respondent is not commonly known by the <victoriasecret-coupons.com> domain name and consequently lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent’s <victoriasecret-coupons.com> domain name resolves to a website that purportedly offers a VICTORIA’S SECRET gift card via hyperlinks to third-party websites that solicit user information and participation in sponsored offers. Complainant asserts that Respondent’s use of the disputed domain name to profit from the presumed pay-per-click fees generated and to promote businesses unrelated to Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). The Panel agrees and finds accordingly. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <victoriasecret-coupons.com> domain name and uses it to advertise VICTORIA’S SECRET gift cards in order to attract Complainant’s customers and create confusion as to the affiliation between Respondent’s resolving website and Complainant. The hyperlinks advertised on the website divert consumers to unaffiliated third-party websites, and Respondent likely profits from these links in the form of pay-per-click fees. The Panel thus finds that Respondent creates confusion to attract Internet users for its own commercial gain, bad faith registration and use under 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant argues that, due to the inclusion of the VICTORIA’S SECRET mark in the disputed domain name, the fame of the registered trademark, and the advertising of a VICTORIA’S SECRET gift card on the resolving website, it is clear that Respondent had actual and/or constructive knowledge of Complainant’s rights in the VICTORIA’S SECRET mark at the time Respondent registered the disputed domain name. The Panel finds that the evidence shows that Respondent had actual knowledge of Complainant’s mark at the time of registration, and registered the <victoriasecret-coupons.com> domain name in bad faith under Policy ¶ 4(a)(iii). 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 Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
The Panel finds that Complainant has satisfied 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-coupons.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 13, 2011
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