Victoria’s Secret Stores Brand Management, Inc. v. Victoria Mason
Claim Number: FA1111001414379
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 Victoria Mason (“Respondent”), Scotland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretsdrivingschool.com>, 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 Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2011; the National Arbitration Forum received payment on November 7, 2011.
On November 7, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretsdrivingschool.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. 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@victoriassecretsdrivingschool.com. 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 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretsdrivingschool.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 <victoriassecretsdrivingschool.com> domain name.
3. Respondent registered and used the <victoriassecretsdrivingschool.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is a large global provider of women’s apparel and accessories. Complainant owns a wide array of trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered June 20, 1981). Complainant uses the mark to label its products, its retail storefronts, and its fashion shows.
Respondent, Victoria Mason, registered the disputed domain name on June 6, 2011. The disputed domain name resolves to a website where Respondent offers driving school services.
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.
Complainant claims that it has established its rights in the VICTORIA’S SECRET mark by registering it with the USPTO (e.g., Reg. No. 1,146,199 registered June 20, 1981). Complainant submits multiple trademark registration certificates to verify its claims. Therefore, the Panel finds that Complainant has established its rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant also claims that Respondent’s <victoriassecretsdrivingschool.com> domain name is confusingly similar to its VICTORIA’S SECRET mark. The disputed domain name includes the entire distinctive portion of the mark, while removing the apostrophe and the space between the terms. The disputed domain name adds the generic top-level domain (“gTLD”) “.com,” the letter “s,” and the generic terms “driving” and “school.” The Panel finds that none of the changes differentiate the disputed domain name from Complainant’s mark. Thus, the Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i). 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 Bond & Co. Jewelers, Inc. v. Texas 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)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶ 4(a)(i)); see also America Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has made, what the Panel finds to be, a prima facie case against Respondent, indicating that it lacks rights or legitimate interests in the disputed domain name. Because of Complainant’s successful prima facie showing, Respondent now bears the burden of proving that it has rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent has failed to file a Response in this matter which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, before making such assumptions, the Panel will examine the record in its entirety and make a determination regarding Respondent rights or legitimate interests in the disputed domain name in accordance with the factors enumerated in Policy ¶ 4(c).
Complainant alleges that Respondent has failed to prove that it is commonly known by the disputed domain name. Respondent has offered no evidence to support a finding to the contrary. While the WHOIS information may suggest a tenuous tie between the disputed domain name and the registrant, listed as “Victoria Mason,” there is no other evidence on record to support such a finding. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant also alleges that Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website offering driving school services for individuals seeking to get their drivers license in the United Kingdom. Respondent presumably collects fees for providing these services to people, effectively removing the disputed domain name from the realm of a noncommercial website. Previous panels have determined that this type of use does not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use of a disputed domain name. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant posits that Respondent registered and is using the disputed domain name in an attempt to generate revenue off of the confusion associated with Complainant’s apparent affiliation with the disputed domain name. Respondent’s <victoriassecretsdrivingschool.com> domain name resolves to a website offering driving school services for sale. Respondent presumably charges for these services, generating revenue by collecting fees for the classes it teaches. The Panel finds that Respondent registered and is using the disputed domain name because of its confusing similarity to Complainant’s VICTORIA’S SECRET mark and generates revenue off of this confusion. As a result, the Panel also finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretsdrivingschool.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 15, 2011
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