Victoria's Secret Stores Brand Management, Inc. v. agus jajat sudrajat
Claim Number: FA1111001415317
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 agus jajat sudrajat (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretprintablecoupons.net>, registered with Internet.bs Corp.
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 14, 2011; the National Arbitration Forum received payment on November 14, 2011.
On November 15, 2011, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretprintablecoupons.net> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@victoriasecretprintablecoupons.net. Also on November 16, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 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 <victoriasecretprintablecoupons.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretprintablecoupons.net> domain name.
3. Respondent registered and used the <victoriasecretprintablecoupons.net> 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 manufacturer and retailer of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns multiple trademark registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office:
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995;
Reg. No. 2,455,260 registered May 29, 2001; &
Reg. No. 3,480,533 registered August 5, 2008.
Respondent, Agus Jajat Sudrajat, registered the <victoriasecretprintablecoupons.net> domain name on May 24, 2011. The disputed domain name resolves to a website with generic content about VICTORIA’S SECRET coupons and numerous blank spaces where the website attempts to display advertisements from Google’s AdSense program.
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’s USPTO trademark registrations are sufficient to conclude that Complainant has rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i), even when Respondent does not live or operate in the U.S. 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <victoriasecretprintablecoupons.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The changes made to Complainant’s mark to create the disputed domain name include the following: deletion of the “ ‘s” in the term “victoria’s,” removal of the space between terms, addition of the generic terms “printable” and “coupons,” and attachment of the generic top-level domain (“gTLD”) “.net.” In previous UDRP proceedings, panels have established that removing letters, punctuation, and spaces from a mark does not remove a disputed domain name from the realm of confusingly similarity. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Prior cases have also established that adding generic terms, and adding a gTLD, have no effect on distinguishing a disputed domain name from the mark it contains. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel thus determines that Respondent’s <victoriasecretprintablecoupons.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii). The Panel finds that Complainant has put forth a sufficient prima facie case in these proceedings. As Respondent failed to respond to the allegations against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks any rights and legitimate interests in the disputed domain names. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Parfums Christian Diro v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the response has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain names.
Complainant asserts that Respondent is not affiliated with Complainant and has not been licensed or permitted to use the VICTORIA’S SECRET mark in any domain name. The WHOIS information for the disputed domain name identifies the registrant as “agus jajat sudrajat,” which does not reflect any association between Respondent and the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant alleges that Respondent’s resolving website contains generic content about VICTORIA’S SECRET coupons and numerous blank spaces where it attempts to display advertisements from Google’s AdSense program. Complainant contends that Respondent received pay-per-click revenue for referring Internet traffic to these websites via the advertised links. The Panel finds that hosting links to unrelated businesses in order to generate click-through fee revenue does not correspond with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(c)(ii).
Respondent is using Complainant’s VICTORIA’S SECRET mark in the <victoriasecretprintablecoupons.net> domain name to attract consumers and drive traffic to the resolving website advertising other websites through the pay-per-click links. Respondent profits from these links when Internet users are diverted to other websites. The Panel therefore concludes that Respondent has shown bad faith registration and use under Policy ¶ 4(b)(iv) by using Complainant’s mark in the disputed domain name to create confusion and attract consumers and for its own profit. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant also alleges that Respondent had actual and/or constructive knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name. Complainant contends that its numerous trademark registration would have given Respondent at least constructive knowledge of the mark. Complainant also argues that it is clear that Respondent had actual knowledge of Complainant’s mark from the content on the resolving website. The Panel agrees. As a result, the Panel holds that Respondent registered the <victoriasecretprintablecoupons.net> domain name in bad faith registration according to Policy ¶ 4(a)(iii). 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 Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretprintablecoupons.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 23, 2011
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