Victoria's Secret Stores Brand Management, Inc. v. Horia Hahaianu
Claim Number: FA1112001419471
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 Horia Hahaianu (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretswimwear.org>, registered with GoDaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2011; the National Arbitration Forum received payment on December 12, 2011.
On December 12, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretswimwear.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@victoriasecretswimwear.org. Also on December 13, 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 January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <victoriasecretswimwear.org> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretswimwear.org> domain name.
3. Respondent registered and used the <victoriasecretswimwear.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., uses its VICTORIA’S SECRET mark in connection with its women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Horia Hahaianu, registered the <victoriasecretswimwear.org> domain name on February 26, 2011. The disputed domain name resolves to a website with some information about Complainant’s swimwear products and hyperlinks to Complainant’s competitors’ websites.
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.
Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Past panels found that a national trademark registration is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant includes evidence of its multiple trademark registrations for its VICTORIA’S SECRET mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). Prior panels further held that a complainant is not required to register a trademark within the country where the respondent resides or operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); 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). In accordance with UDRP precedent, the Panel finds that Complainant has rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant contends that the <victoriasecretswimwear.org> domain name is identical or confusingly similar to Complainant’s VICTORIA’S SECRET mark. Previous panels concluded that a disputed domain name is confusingly similar to a complainant’s mark if the disputed domain name only differs from the complainant’s mark by the removal a letter and an apostrophe. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). In this case, the disputed domain name removes the apostrophe and the letter “s” from Complainant’s mark. Prior panels found that the addition of a descriptive term also fails to remove a disputed domain name from the realm of confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). The <victoriasecretswimwear.org> domain name combines Complainant’s mark with the descriptive term “swimwear.” Past panels determined that the removal of a space and the addition of a generic top-level domain (“gTLD”) was irrelevant to a Policy ¶ 4(a)(i) analysis. See 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)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Respondent’s disputed domain name does not include the space in Complainant’s mark and does include the gTLD “.org.” Applying this precedent to the facts of the case, the Panel finds that Respondent’s <victoriasecretswimwear.org> 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 alleges that Respondent does not have any rights or legitimate interests in any of the <victoriasecretswimwear.org> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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).
The first element the Panel examines is whether Respondent is commonly known by the <victoriasecretswimwear.org> domain name. Prior panels concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant did not authorize the respondent to use the complainant’s mark, and the respondent failed to present any evidence in support of a commonly known by finding. 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 of that it is commonly known by the disputed domain name); see also 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). Here, the WHOIS information lists “Horia Hahaianu” as the registrant of the disputed domain name, which the Panel finds is not similar to the <victoriasecretswimwear.org> domain name. Respondent is not affiliated with Complainant and is not licensed or permitted to use the VICTORIA’S SECRET mark in a domain name. Respondent did not respond to this case. Consequently, the Panel finds that Respondent is not commonly known by the <victoriasecretswimwear.org> domain name pursuant to Policy ¶ 4(c)(ii).
The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Previous panels have found that a respondent does not own rights and legitimate interests in the disputed domain name when the respondent uses the disputed domain name to resolve to a website containing hyperlinks to a complainant’s competitors. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Respondent’s <victoriasecretswimwear.org> domain name resolves to a website featuring information about Complainant’s swimwear products and hyperlinks resolving to Complainant’s competitors’ websites. As Respondent presumably receives click-through fees from the hyperlinks, the Panel finds that Respondent is not making 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 <victoriasecretswimwear.org> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Past panels found that a respondent’s registration and use of a disputed domain name to provide competing hyperlinks disrupts a complainant’s business. 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s <victoriasecretswimwear.org> domain name resolves to a website that features information about Complainant’s swimwear products and provides hyperlinks to the websites of Complainant’s competitors. As Internet users interested in Complainant’s swimwear products may purchase similar products from Complainant’s competitors due to Respondent’s registration and use of the disputed domain name, the Panel concludes that Respondent registered and uses the <victoriasecretswimwear.org> domain name in bad faith under Policy ¶ 4(b)(iii).
The Panel finds that Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Previous panels held that a respondent’s registration and use of a disputed domain name to resolve to a parked website featuring hyperlinks to a complainant’s competitors is evidence of bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). In this case, the <victoriasecretswimwear.org> domain name resolves to Respondent’s website that contains information about Complainant’s swimwear and hyperlinks to Complainant’s competitors. Respondent likely profits from click-through fees from the hyperlinks. Therefore, the Panel finds that Respondent’s registration and use of the <victoriasecretswimwear.org> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
While actual and constructive knowledge of Complainant’s rights is not a specific provision of Policy ¶ 4(b) and constructive notice has not been generally held to suffice for a finding of bad faith registration and use, prior panels concluded that that a panel may find that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if the respondent is found to have had actual notice of the 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). Based on Respondent’s use of the disputed domain name to provide information about Complainant’s products and to host competing hyperlinks, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the VICTORIA’S SECRET mark. Thus, the Panel finds that Respondent registered and uses the <victoriasecretswimwear.org> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <victoriasecretswimwear.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 27, 2012
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