Victoria's Secret Stores Brand Management, Inc. v. SEOMarketing.org / Billing Support
Claim Number: FA1111001414039
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 SEOMarketing.org / Billing Support (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretpink.net>, registered with Threadtrade.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.
Sandra J. Franklin 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 5, 2011, Threadtrade.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretpink.net> domain name is registered with Threadtrade.com, Inc. and that Respondent is the current registrant of the name. Threadtrade.com, Inc. has verified that Respondent is bound by the Threadtrade.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 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@victoriasecretpink.net. Also on November 7, 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 <victoriasecretpink.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretpink.net> domain name.
3. Respondent registered and used the <victoriasecretpink.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., registered its VICTORIA’S SECRET PINK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,820,380 registered March 2, 2004). Complainant uses its mark in connection with the sale of women’s lingerie and other apparel and products.
Respondent, SEOMarketing.org / Billing Support, registered the <victoriasecretpink.net> domain name on February 19, 2011. The disputed domain name formerly resolved to a website purporting to offer a free $1,000 gift card for Complainant’s stores in exchange for personal information and the completion of offers from unrelated, third-party businesses. The disputed domain name currently resolves to a website hosting third-party hyperlinks, some of which resolve to Complainant’s competitors.
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 has demonstrated rights in its VICTORIA’S SECRET PINK mark through its trademark registrations with the USPTO for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <victoriasecretpink.net> domain name is confusingly similar to its VICTORIA’S SECRET PINK mark; the disputed domain name only differs from Complainant’s mark in the addition of the generic top-level domain (“gTLD”) “.net” and the removal of the spaces, the apostrophe, and the letter “s.” The Panel fins that these changes fail to adequately distinguish the disputed domain name from Complainant’s mark. See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel finds that Respondent’s <victoriasecretpink.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark for the purpose of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <victoriasecretpink.net> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Here, the Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <victoriasecretpink.net> domain name. 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). 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 Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant argues that Respondent is not commonly known by the <victoriasecretpink.net> domain name. Complainant states that Respondent is not affiliated with Complainant and that Complainant has not authorized or licensed Respondent to use Complainant’s VICTORIA’S SECRET PINK mark. The WHOIS information lists the registrant of the <victoriasecretpink.net> domain name as “SEOMarketing.org / Billing Support.” Consequently, the Panel determines that Respondent is not commonly known by the <victoriasecretpink.net> domain name according to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts that Respondent formerly used the disputed domain name to host a website that purported to offer Internet users a $1,000 gift card to Complainant’s stores in exchange for their personal information and completion of offers from unrelated third parties. Complainant contends that Respondent currently uses the disputed domain name to resolve to a website that features third-party hyperlinks, some of which resolve to Complainant’s competitors. Complainant argues that with both uses, Respondent commercially benefits from referral fees from the third parties found on the resolving websites. The Panel agrees with Complainant and finds that both of these uses fail to demonstrate a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <victoriasecretpink.net> domain name. See Victoria’s Secret Stores Brand Mgmt., Inc. v. HacerFortuna.com, FA 1332773 (Nat. Arb. Forum Aug. 9, 2010) (finding no rights and legitimate interests because the respondent’s use of the disputed domain name to purport to offer a gift card in exchange for “providing personal and financial information or purchase products from select businesses” unrelated to the complainant is evidence that the respondent commercially benefits the third-party businesses); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent currently uses the <victoriasecretpink.net> domain name to host third-party hyperlinks, some of which resolve to Complainant’s competitors. The Panel therefore finds that Respondent’s registration and use disrupts Complainant’s business by redirecting Internet users to Complainant’s competitors, constituting Policy ¶ 4(b)(iii) bad faith registration and use. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent’s past and current use of the disputed domain name, coupled with Respondent’s registration of the confusingly similar domain name, evidence bad faith registration and use under Policy ¶ 4(b)(iv). According to Complainant, Respondent previously used the <victoriasecretpink.net> domain name to resolve to a website that purported to offer a gift card to Complainant’s stores in exchange for personal information from Internet users. Respondent currently uses the <victoriasecretpink.net> domain name to host third-party hyperlinks, including competing hyperlinks. Complainant argues that Respondent commercially benefit from click-through fees from the competing hyperlinks. The Panel determines that Respondent is guilty of Policy ¶ 4(b)(iv) bad faith registration and use because, with both uses, Respondent commercially benefits from confusion created as to Complainant’s affiliation with the disputed domain name. See salesforce.com, inc. v. AlHalbi, FA 1410932 (Nat. Arb. Forum Nov. 21, 2011) (finding Policy ¶ 4(b)(iv) bad faith registration when the respondent registered and used a domain name to offer a prize in exchange for personal information and reviewing offers from unrelated third parties); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
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 PINK mark. While constructive notice does not by itself suffice for a finding of bad faith registration and use, the Panel nonetheless finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii), because Respondent had actual notice of Complainant’s trademark rights. 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretpink.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 13, 2011
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