Victoria's Secret Stores Brand Management, Inc. v. Tim G. / dew web ltd
Claim Number: FA1110001413442
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 G. / dew web ltd (“Respondent”), Scotland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretcreditcard.info>, registered with GoDaddy.com 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.
Anne M. Wallace, Q.C., 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 31, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretcreditcard.info> domain name is registered with GoDaddy.com Inc. and that Respondent is the current registrant of the name. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com 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 November 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@victoriasecretcreditcard.info. Also on November 2, 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.
A timely Response was received and determined to be complete on November 21, 2011.
On December 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits:
· It uses the VICTORIA’S SECRET mark in connection with women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant includes evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).
· Respondent’s <victoriasecretcreditcard.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The Disputed Domain Name removes the apostrophe and the letter “s” from Complainant’s mark and attaches the generic terms “credit” and “card.”
· Respondent is not commonly known by the <victoriasecretcreditcard.info> domain name. Respondent is not affiliated with Complainant and Respondent has not been licensed or permitted to use Complainant’s VICTORIA’S SECRET mark. The WHOIS information lists “Tim G. / dew web ltd” as the registrant of the Disputed Domain Name.
· Respondent currently fails to make an active use of the <victoriasecretcreditcard.info> domain name. Respondent’s Disputed Domain Name resolves to a website that states the following:
Network Error (dns_server_failure)
Your request could not be processed because an error occurred contacting the DNS server.
The DNS server may be temporarily unavailable, or there could be a network problem.
For assistance, contact the Help Desk at OasisSupport@mindshift.com
· Respondent’s <victoriasecretcreditcard.info> domain name formerly resolved to a website that provided information about credit card services and hosted hyperlink advertisements to third-party websites unrelated to Complainant. Complainant provides screenshots in support of its allegations.
· As noted above, Complainant claims that Respondent registered and used the <victoriasecretcreditcard.info> domain name for the purpose of providing information about credit card services and hyperlink advertisements unrelated to Complainant. Complainant asserts that Respondent commercially benefited from this prior use by receiving click-through fees. Complainant argues that Respondent attempts to commercially benefit by creating confusion as to Complainant’s affiliation with the Disputed Domain Name.
· Respondent currently does not make an active use of the <victoriasecretcreditcard.info> domain name and that the resolving website contains an error message, as noted above.
· Respondent could not have registered and used the Disputed Domain Name without actual or constructive knowledge of Complainant and its rights in the VICTORIA’S SECRET mark.
B. Respondent
Respondent provided a short response as follows:
Hi Alexandra, I resend this email,
"I just check this email inbox and find your messages. I registered that domain name, and I have already stop running websites on that domain several months ago, if they want that domain name I can transfer it to them."
This is my formal Response, thank you.
The Panel finds:
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."
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 established that it uses the VICTORIA’S SECRET mark in connection with women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant provided evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels found that registration with the USPTO is sufficient to establish Policy ¶ 4(a)(i) rights. While Respondent resides in Scotland, it does not matter as long as Complainant has a trademark registration with a national trademark agency. See, e.g., Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007). Thus, the Panel concludes Complainant has established rights in its VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <victoriasecretcreditcard.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The Disputed Domain Name removes the apostrophe and the letter “s” from Complainant’s mark and attaches the generic terms “credit” and “card.” The Disputed Domain Name also contains the generic top-level domain (“gTLD”) “.info.” In Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000), and LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003), the panels concluded that the removal of an apostrophe did not remove a Disputed Domain Name from the realm of confusing similarity. The panels in Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000), and Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004), made a similar holding in relation to the removal of the letter “s.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panels concluded that the addition of a generic term does not adequately differentiate the Disputed Domain Name from the complainant’s mark. Finally, the panels in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), found the addition of a gTLD to be irrelevant to a Policy ¶ 4(a)(i) analysis. Consequently, the Panel holds that Respondent’s <victoriasecretcreditcard.info> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is nothing before the panel to show that Respondent is commonly known by the <victoriasecretcreditcard.info> domain name. Respondent is not affiliated with Complainant and Respondent has not been licensed or permitted to use Complainant’s VICTORIA’S SECRET mark. The WHOIS information lists “Tim G. / dew web ltd” as the registrant of the Disputed Domain Name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that the combination of the WHOIS information and the lack of authorization from the complainant for the respondent to use the mark forced the panels to hold that the respondents were not commonly known by the domain names. Based on this precedent and the evidence in the record, the Panel finds that Respondent is not commonly known by the <victoriasecretcreditcard.info> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant has also demonstrated that Respondent currently fails to make an active use of the <victoriasecretcreditcard.info> domain name. Respondent’s Disputed Domain Name resolves to a website that shows a server failure. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), and Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000), the panels found that failure to make an active use of the Disputed Domain Name was evidence that a respondent lacked rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). Respondent’s lack of use of the Disputed Domain Name in this case is evidence 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 Name.
Through screen shots, Complainant demonstrates Respondent’s <victoriasecretcreditcard.info> domain name formerly resolved to a website that provided information about credit card services and hosted hyperlink advertisements to third-party websites unrelated to Complainant. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), and Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007), the panels held that a respondent’s use of a domain name to host unrelated hyperlink advertisements is not evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. Thus, the Panel may conclude that Respondent’s former use is evidence that Respondent lacks rights and legitimate interests in the Disputed Domain Name under Policy ¶ 4(a)(ii).
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has failed to call any evidence to rebut the prima facie case. Therefore, Complainant has succeeded in establishing Respondent lacks rights or legitimate interest in the Disputed Domain Name.
The information before the panel shows that Respondent registered and used the <victoriasecretcreditcard.info> domain name for the purpose of providing information about credit card services and hyperlink advertisements unrelated to Complainant. It is more likely than not that Respondent commercially benefited from this prior use by receiving click-through fees. Respondent attempted to commercially benefit by creating confusion as to Complainant’s affiliation with the Disputed Domain Name. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), and T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panels held that a website hosting unrelated information and advertisement hyperlinks is evidence of a respondent’s bad faith registration and use. The Panel agrees with this assessment and the Panel holds that Respondent both registered and used the <victoriasecretcreditcard.info> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel also notes that Respondent currently does not make any active use of the <victoriasecretcreditcard.info> domain name and that the resolving website contains an error message, as noted above. In Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006), and Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007), the panels concluded that a respondent’s failure to make active use of a Disputed Domain Name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). The Panel agrees and finds bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent could not have registered and used the Disputed Domain Name without actual or constructive knowledge of Complainant and its rights in the VICTORIA’S SECRET mark. Constructive notice has not been generally held to suffice for a finding of bad faith registration and use and there is insufficient evidence in this case on which to permit a finding of actual notice.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretcreditcard.info> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: December 12, 2011
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