Victoria's Secret Stores Brand Management, Inc. v. Private / Damir Sabitov
Claim Number: FA1111001414032
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 / Damir Sabitov (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriasecretscoupons.net>, <victoriasecretscoupons.com>, and <victoriasecretscoupons.org>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as the Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 3, 2011; the National Arbitration Forum received payment on November 3, 2011.
On November 3, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretscoupons.net>, <victoriasecretscoupons.com>, and <victoriasecretscoupons.org> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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@victoriasecretscoupons.net, postmaster@victoriasecretscoupons.com, and postmaster@andvictoriasecretscoupons.org. Also on November 7, 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 November 30, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of a famous trademark and service mark which have been registered and continually used in commerce since at least as early as June 12, 1977. Complainant further contends that its marks have been prominently used on the Internet and that it first registered a domain name mark associated with its marks on January 23, 1995. Complainant contends that Respondent has incorporated Complainant’s marks or portions thereof in the disputed domain names, resulting in the disputed domains being confusingly similar to Complainant’s marks. Complainant asserts that Respondent’s domain names are likely to cause mistake and misleadingly divert Internet users trying to locate an official company site.
Complainant further notes that Respondent has no rights or legitimate interests in the domain names, Respondent has no active websites associated with the disputed domain names. Complainant states further that Respondent is not an affiliate of the Complainant nor has Respondent been licensed or permitted to use Complainant’s registered marks in any manner. Complainant asserts that Respondent is not commonly known by the disputed domains in any capacity and that Respondent is not making a fair use of the of the disputed domain names.
Complainant additionally contends that Respondent registered and used the disputed names in bad faith as evidenced by Respondent’s initial lack of authorization and current non-use. Complainant points out that Respondent has previously used the disputed domain names to improperly display Complainant’s copyrighted photographs and drive traffic to an unauthorized site that advertised and promoted the business of Complainant’s competitors. Complainant contends that Respondent knew of Complainant’s marks due to Complainant’s fame and thus the only reason Respondent registered the disputed domains was to trade off the reputation and goodwill of the Complainant.
B. Respondent
Respondent contends that he has not benefitted from the disputed domain names in any way, that the domain names were deleted from his registrar account long ago, and that he was unaware that the domain names were still listed under his name at the time the UDRP was filed. Respondent further states, “I have no objections with having the domain names victoriasecretsoupons.net, victoriasecretscoupons.com, victoriasecretcoupons.org to be transferred to Victoria’s Secret Stores Brand Management, Inc.”.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is the registered owner of the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981) in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns more than 30 valid, subsisting registrations for its mark and variations thereon with the USPTO, many of which have attained incontestable status, and also has another 16 applications with the USPTO pending. The USPTO registrations establish Complainant’s rights in the VICTORIA’S SECRET mark. Complainant’s mark is known throughout the world as Complainant has more than 1,000 Victoria’s Secret retail stores as well as a global presence through its print mail order catalogue and its e-commerce web site located at <victoriassecret.com>.
Respondent appears to be an individual according to Whois records which identify him as Private/Damir Sabitov of Richmond, BC in Canada (CA). Respondent submitted correspondence signed as Damir Sabitov in which he indicated that he sought to contact Complainant’s counsel in order to inform them that he did not object to transferring the domain names in dispute. The registrar of record for the domains in dispute is Tucows, Inc. of Toronto, CA
Respondent consents to transfer the <victoriasecretscoupons.net>, <victoriasecretscoupons.com>, and <victoriasecretscoupons.org> domain names to Complainant. After the initiation of this proceeding, Tucows, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
In a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain names in question to Complainant, the Panel has decided to forego the traditional UDRP analysis and instead to order an immediate transfer of the <victoriasecretscoupons.net>, <victoriasecretscoupons.com>, and <victoriasecretscoupons.org> domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
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.
Due to Respondent’s consent to transfer this element has not been analyzed.
Due to Respondent’s consent to transfer this element has not been analyzed.
Due to Respondent’s consent to transfer this element has not been analyzed.
Due to the Respondent’s consent to transfer the disputed domain names the Panel concludes that the Complainant’s requested relief of transfer of the disputed domain names shall be immediately GRANTED.
Accordingly, it is Ordered that the <victoriasecretscoupons.net>, <victoriasecretscoupons.com>, and <victoriasecretscoupons.org> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 13, 2011
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