Victoria's Secret Stores Brand Management, Inc. v. Richard Wight
Claim Number: FA1111001414386
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 Richard Wight (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecret1000.info>, registered with eNom.com.
The undersigned certifies that he 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.
Paul M. DeCicco 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 8, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <victoriassecret1000.info> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 9, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@victoriassecret1000.info. Also on November 9, 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 9, 2011.
On November 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
The complainant is Victoria’s Secret Stores Brand Management, Inc., a Delaware corporation. Complainant is an indirect wholly owned subsidiary of Limited Brands, Inc. Complainant is the United States record owner of VICTORIA’S SECRET trademarks and service marks, which it licenses to other subsidiaries of Limited Brands. According to a query conducted with the “Whois” tool for eNom, Inc., the domain name <victoriassecret1000.info> is registered to Richard Wight.
The Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof which have been adopted and continually used in commerce by the Complainant, its licensees, and predecessors since at least as early as June 12, 1977 in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards.
The mark VICTORIA’S SECRET has been prominently used on the Internet since at least 1998, in connection with Complainant’s goods at Complainant’s web site <victoriassecret.com>. The Complainant first registered this domain name on January 23, 1995. Additionally, the mark VICTORIA’s SECRET has been prominently used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows.
The mark VICTORIA’S SECRET and variations thereof are duly registered in the United States Patent and Trademark Office under 32 valid, subsisting and active registrations, and Complainant is the owner thereof by registration and/or assignment.
Respondent’s domain name incorporates Complainant’s VICTORIA’S SECRET mark in its entirety (absent the apostrophe, and space, which cannot be included in a domain name), and merely appends the numerals “1000” to the mark. By registering a domain name that merely adds numerals to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves. As a result, Respondent’s Domain Name is likely to cause mistake and misleadingly divert Internet users trying to locate an official VICTORIA’S SECRET web site.
The Domain Name resolves to a web site titled “ Victoria’s Secret $1000 Gift Card,” prominently displaying a graphic of a Victoria’s Secret gift card and a form for users to submit their name and email address to receive offers by email. The site contains a link on the bottom of the page to continue to the current offer. However, the link currently appears to be broken; but attempts to redirect through <tracking.wolfstormmedia.com>, an affiliate network that facilitates the payment of pay-per-click or pay-per-action fees. The HTML of Respondent’s website reveals the link is associated with the shortened URL <bit.ly/dMVIjj>, which redirects to a blank page at <tracking.wolfstormmedia.com>. On information and belief, Respondent receives referral fees for sending participants to another website associated with the current offer link when the link is active, receives referral fees associated with email offers sent to users who submit an email address using the website, or otherwise commercially benefits from this use of the at-issue domain name.
Respondent is not affiliated with Complainant; nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET Marks in domain names, on any web site, or in any other manner. Respondent’s <victoriassecret1000.com> website is also not affiliated with or endorsed by Complainant. Further, on information and belief, Respondent is not commonly known by the domain name, either as a business, individual, or other organization.
Respondent is using the domain name to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site to Respondent’s website, which solicits email addresses for the purpose of sending offers, and, on information and belief, to another website offering a Victoria’s Secret gift card when the link on the <victoriassecret1000.com> website works as Respondent intended. On information and belief, Respondent commercially benefits from this diversion. Such use of Complainant’s mark to derive revenue from diverting Internet traffic to a web site that is not owned or authorized by Complainant and that implies it is offering a Victoria’s Secret gift card does not constitute use in connection with a bona fide offering of goods or services.
Additionally, Respondent registered the domain name more than thirty-three years after Complainant began using its VICTORIA’S SECRET Marks; more than fifteen years after Complainant registered the domain name victoriassecret.com for its e-commerce web site; and long after the VICTORIA’S SECRET Marks became famous.
Respondent is not making a legitimate noncommercial or fair use of the domain name. On information and belief, Respondent has chosen the <victoriassecret1000.info> domain name to misleadingly trade off the fame of the VICTORIA’S SECRET Marks in order to divert Internet traffic from Complainant’s web site to the Site and another website offering a Victoria’s Secret gift card for commercial gain.
The domain name was registered and is being used in bad faith. Respondent is using Complainant’s VICTORIA’S SECRET mark in the at-issue domain name to drive traffic to the <victoriassecret1000.com> website and, on information and belief, to another website offering a Victoria’s Secret gift card when the link on the site works as Respondent intended, neither of which are owned or authorized by Complainant. On information and belief, Respondent commercially benefits from this use of the domain name. Thus, on information and belief, Respondent registered the domain name with the intent to attract Internet users to the <victoriassecret1000.com> website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain name and site, thereby misleadingly diverting Internet traffic to the <victoriassecret1000.com> website and the website linked to from the current offer advertisement on the site when the link works as Respondent intended, for commercial gain. This use of the domain name indicates that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [a] web site or other on-line location by creating a likelihood of confusion with the Complainants‟ mark as to the source, sponsorship, affiliation, or endorsement of [a] web site or location or of a product or service on [a] web site or location.”
Respondent’s use of the domain name to funnel traffic to the <victoriassecret1000.com> website, which displays a Victoria’s Secret gift card, “current offer” link, and a form for visitors to sign up to receive offers by email, creates a likelihood of confusion by leading visitors to believe, incorrectly, that the <victoriassecret1000.com> website, and website to which the “current offer” advertisement links, are affiliated with, endorsed or sponsored by Complainant. Thus, Respondent’s use of the domain name infringes and tarnishes the VICTORIA’S SECRET Marks. Respondent was aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the domain name. Given the fame of the VICTORIA’S SECRET trademark, there is no reason for Respondent to have registered the domain name other than to trade off of the reputation and goodwill of Complainant’s mark. Given the incorporation of Complainant’s famous VICTORIA’S SECRET mark in the domain name, there is no conceivable use of it that would not infringe Complainant’s mark.
At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. In addition, Respondent’s registration of the <victoriassecret1000.info> violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 43(d), et seq.
B. Respondent
Respondent solely contends that he agrees to transfer the domain name to the Complainant.
Complainant’s factual claims are taken as true.
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.
Respondent consents to transfer <victoriassecret1000.info> to Complainant. However, after the instant proceeding commenced registrar GoDaddy.com, Inc., placed a hold on Respondent’s account thereby preventing Respondent from transferring the disputed domain name while this proceeding is pending. Policy ¶8(a) additionally prohibits a respondent from transferring its at-issue domain name during a pending administrative proceeding brought pursuant to Paragraph 4 and for a period of fifteen (15) business days after the proceeding is concluded.
By agreeing to transfer the at-issue domain name Respondent in effect asks the Panel to order an immediate transfer of the <victoriassecret1000.info> domain name. Such a request is compelling. 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.”). Additionally, Complainant has not filed an Additional Submission subsequent to the Response and otherwise has not urged the Panel to discuss the merits of its Complaint in light of Respondent’s agreement to transfer the domain name.
On the other hand where a respondent consents to transfer a panel may decide that the Complainant has not implicitly consented to the transfer unless a panel issues a decision based on the merits. This approach recognizes that “consenting-to-transfer” may be but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Texas Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
A
court or other dispute resolution body’s power to order a complainant’s
requested relief after the opposing party consents to such relief arguably
qualifies as a “principal of law” under Rule ¶15(a). Thereby and for the
reasons setout far above a UDRP panel is empowered to grant relief by
transferring a domain name notwithstanding that its decision to do so is not
rendered on account of proof of each of the Policy ¶4(a) elements but for another
reason such as where, like here, transfer of the disputed domain name is agreed
to by the respondent.
In the instant case, Respondent fails to challenge or even summarily deny the aversions made in the Complaint. Respondent thereby admits by his silence and readiness to transfer the domain name that each of Complainant’s claims and arguments under paragraph 4(a) is well taken. Thus the Panel finds: Complainant’s contentions and arguments to be well-taken; that the at-issue domain name is confusingly similar to a trademark in which the Complainant has rights; that Respondent has no rights or interests in respect of the domain name; and that the at-issue domain name was registered and is being used by Respondent in bad faith. Therefore, with deference to Respondent’s agreement to transfer or to the record, the Panel similarly concludes that the requested relief should be granted.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecret1000.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 28, 2011
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