Victoria's Secret Stores Brand Management, Inc. v. Domain ID Shield Service / Domain ID Shield Service CO., Limited
Claim Number: FA1112001419476
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 Domain ID Shield Service / Domain ID Shield Service CO., Limited (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecret-ua.com>, registered with Onlinenic, 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 December 12, 2011; the National Arbitration Forum received payment on December 12, 2011.
On December 13, 2011, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecret-ua.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 4, 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@victoriassecret-ua.com. Also on December 15, 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 January 16, 2012, 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 <victoriassecret-ua.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 <victoriassecret-ua.com> domain name.
3. Respondent registered and used the <victoriassecret-ua.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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). Complainant uses its VICTORIA’S SECRET mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.
Respondent registered the <victoriassecret-ua.com> domain name on August 18, 2011. The disputed domain name resolves to a Russian language website that advertises and sells Complainant’s products without authorization from Complainant.
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 provides the Panel with evidence of its trademark registrations with the USPTO for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). Therefore, the Panel finds that Complainant has established rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), where the panels held that trademark registrations with a national trademark authority are sufficient to establish rights in a mark. The Panels notes previous decisions in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), where the panels concluded that a complainant is only required to register a trademark with any national trademark authority and is not required to own a trademark registration within the country the respondent resides or operates.
Respondent’s <victoriassecret-ua.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Respondent makes minor changes to the disputed domain name, such as removing a space and an apostrophe, adding a hyphen and the letters “u” and “a,” and the addition of the generic top-level domain (“gTLD”) “.com.” In Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000), and Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003), the panels found that the removal of an apostrophe does not remove a disputed domain name from the realm of confusing similarity. Similarly, in Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000), and Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003), the panels concluded that the addition of a hyphen did not sufficiently differentiate a disputed domain name from a complainant’s mark. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), and Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), the panels held that the addition of letters to a complainant’s mark did not prevent a finding of confusing similarity. Finally, the panels in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), and Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), determined that the removal of a space and the addition of a gTLD were irrelevant to a Policy ¶ 4(a)(i) analysis. In accordance with this UDRP precedent, the Panel holds that Respondent’s <victoriassecret-ua.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in any of the <victoriassecret-ua.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel 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). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel 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. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <victoriassecret-ua.com> domain name under Policy ¶ 4(c)(ii). In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panels found that a respondent is not commonly known by a disputed domain name if the complainant did not authorize the respondent’s use of the mark, the WHOIS information was not similar to the disputed domain name, and the respondent failed to present any evidence in support of a commonly known by finding. In this case, Complainant asserts that Respondent is not affiliated with Complainant and that Respondent is not licensed or authorized to use Complainant’s VICTORIA’S SECRET mark in any way. The Panel reviewed the WHOIS information and found that it is not similar to the <victoriassecret-ua.com> domain name. Moreover, Respondent did not respond to this case and did not present any evidence that it is commonly known by the disputed domain name. Thus, the Panel determines that Respondent is not commonly known by the <victoriassecret-ua.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent uses the <victoriassecret-ua.com> domain name to make neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. In Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), and Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), the panels held that a respondent lacked rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii) if the respondent uses the disputed domain name to sell the complainant’s products without authorization from the complainant. According to Complainant, Respondent in this case uses the disputed domain name to host a Russian language website that advertises and sells Complainant’s products without Complainant’s permission. Complainant provided the Panel with a screenshot of the resolving website, and the Panel agrees with Complainant’s assessment. Therefore, the Panel finds that Respondent’s use of the <victoriassecret-ua.com> domain name evidences neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Respondent registered and uses the <victoriassecret-ua.com> domain name for the purpose of disrupting Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). In Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panels found that the sale of a complainant’s products without authorization from the complainant demonstrates a respondent’s bad faith registration and use because such a use disrupts a complainant’s business. Respondent’s <victoriassecret-ua.com> domain name resolves to a website that advertises and sells Complainant’s products. Complainant states that it did not grant Respondent permission to sell Complainant’s products. Therefore, Panel finds that Respondent registered and uses the <victoriassecret-ua.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Respondent also exhibits bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent attempts to commercially gain by creating a likelihood of confusion with Complainant’s sponsorship of, affiliation with, or endorsement of the <victoriassecret-ua.com> domain name. In Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), and Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001), the panels determined that a respondent’s registration and use of a confusingly similar disputed domain name for the purpose of selling the complainant’s products evidence that the respondent is attempting to commercially gain from Internet users that believe the complainant is affiliated with the products sold on the resolving website. In the case at hand, Respondent commercially benefits from the unauthorized sale of Complainant’s products on the resolving website. Based on the evidence in the record, the Panel finds that Respondent registered and uses the <victoriassecret-ua.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
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 mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the panels in Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006), and Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), found that a panel may nonetheless find that a respondent registered and is using a 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. Complainant provided the Panel with screenshots of the resolving website that show Complainant’s products, Complainant’s models, and Complainant’s marks. Due to the contents of the resolving website, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the VICTORIA’S SECRET mark, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <victoriassecret-ua.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 23, 2012
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