Victoria's Secret Stores Brand Management, Inc. v. None / Ruth Collis
Claim Number: FA1201001426139
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 None / Ruth Collis (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victorias-secret-model-names.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 24, 2012; the National Arbitration Forum received payment on January 24, 2012.
On January 24, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victorias-secret-model-names.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 January 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@victorias-secret-model-names.com. Also on January 25, 2012, 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.
A timely Response was received and determined to be complete on February 6, 2012.
On February 8, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends that it owns famous trademarks and service marks based on the mark VICTORIA’S SECRET and that Respondent’s domain name, <victorias-secret-model-names.com> is confusingly similar to its mark. Complainant further contends that the Respondent has no rights or legitimate interests in the domain name in dispute. Complainant finally asserts that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent contends that she cancelled the domain name upon notice of the proceedings. She states that “There’s nothing to contest or dispute. You can have the domain if my deleting it last night was not enough. Please tell me how to end all this immediately and not drag out over weeks and months.” The Respondent also indicates that she did not mean to bother so many people and ask all to accept her sincerest apologies as she was unaware that her registration of the disputed domain would create so much harm and offense.
Complainant, Victoria’s Secret Stores Brand Management, Inc. (“VSSBM”), is a U.S. corporation and U.S. Patent and Trademark Office (USPTO) record owner of VICTORIA’S SECRET trademarks and service marks. Complainant’s marks have been adopted and used in commerce since a reported date back to June 12, 1977 in connection with the sale of women’s apparel and personal products. Complainant uses its marks in association with its retail stores physically located throughout the U.S. and also in global advertising for sales from its e-commerce web site located at <vistoriassecret.com>, which has reportedly been established since at least 1998. Complainant sells billions of dollars worth of merchandise annually, engages in live Internet fashion shows, and annual television broadcasts in furtherance of marketing its VICTORIA’S SECRET products and brand. The Complainant claims that its “widespread, long-time, continuous and prominent use” has resulted in it acquiring “significant goodwill, wide public recognition, and fame as a means by which Complainant and its merchandise are known to the public and its source and origin are identified.”
Respondent is an individual whose address is listed at a location in the U.S. state of California. The Respondent states that her registration of the disputed domain “was all meant as a simple research project on understanding how the [I]nternet works with no harm involved”. Throughout the Respondent’s written correspondence she repeatedly request that Complainant take the domain name and at one point specifically ask that someone “end this hell now”.
Consent to Transfer
Respondent consents to transfer the <victorias-secret-model-names.com> domain name to Complainant. However, after the initiation of this proceeding, a hold was placed by the domain name registrar on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is pending. The Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, it is unnecessary to apply the traditional UDRP analysis. The Panel instead orders an immediate transfer of the <victorias-secret-model-names.com> domain name. 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.”).
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.
See Consent to Transfer above.
See Consent to Transfer above.
See Consent to Transfer above.
As the Complainant and Respondent have agreed to the transfer of the disputed domain name, the Panel concludes that the Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <victorias-secret-model-names.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 22, 2012
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