Victoria's Secret Stores Brand Management, Inc. v. CK Ventures, Inc.
Claim Number: FA1201001426144
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 CK Ventures, Inc (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretjobs.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. O'Connor as Panelist.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretjobs.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@victoriassecretjobs.com. Also on January 27, 2012, 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 February 17, 2012.
On February 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the famous trademark and service mark VICTORIA'S SECRET and variations thereof (collectively, the "VICTORIA'S SECRET Marks"), 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 Domain Name in issue, <victoriassecretjobs.com>, is confusingly similar to Complainant's mark VICTORIA'S SECRET and the domain name used by Complainant in connection with the legitimate sale of products bearing the VICTORIA'S SECRET Marks, namely <victoriassecret.com>. That Domain Name incorporates Complainant's VICTORIA'S SECRET Marks in its entirety (absent the apostrophe and space, which cannot be included in a domain), and merely appends the generic term "jobs" to the mark. The Domain Name, which merely adds a generic term to the famous mark VICTORIA'S SECRET, is confusingly similar to that mark.
The Domain Name resolves to a web site (the "Site") featuring a variety of clickable search terms, which lead to sponsored advertisements for businesses unrelated to Complainant, including advertisements for competitors of Complainant.
Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization.
Respondent registered the Domain Name twenty-eight years after Complainant began using its VICTORIA'S SECRET Marks; ten 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.
The sole reason Respondent has chosen the Domain Name is to misleadingly trade off the fame of the VICTORIA'S SECRET Marks in order to divert Internet traffic to the Site for commercial gain
It is inconceivable that Respondent was not aware of Complainant's famous trademark VICTORIA'S SECRET when Respondent registered the Domain Name. Given the fame of the VICTORIA'S SECRET Marks, 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 famous VICTORIA'S SECRET Marks.
B. Respondent
Respondent denies that it registered the Domain Name in bad faith. On February 9, 2012 Respondent advised Complainant's Counsel that it would transfer the Domain Name to the Complainant to save the added time and expense of proceeding with a UDRP. On February 10th, Complainant's Counsel responded, that their client's "policy" was to allow the process to proceed with the NAF. Even though it may have a defense, as soon as Respondent became aware of the dispute it desired to transfer the Domain Name and files this Response to transfer the domain and avoid further delay and expense to the Parties or the NAF.
Respondent had no intent to target Complainant or improperly use its trademark when it registered the Domain Name, did not register the Domain Name with Complainant's trademark in mind, and never intended to target or profit from Complainant's trademark. Nevertheless, in the interest of saving the cost involved in defending its rights to the Domain Name, Respondent stipulates for the Panel to transfer the Domain Name to Complainant.
Complainant has established rights in the VICTORIA'S SECRET Marks. The Panel declines to make any other findings under the Policy, for the reasons stated below.
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 has not contested the transfer of the Domain Name but instead stipulates to transfer of the Domain Name to Complainant.
As a consequence of that stipulation, the Panel will forego the traditional UDRP analysis and order an immediate transfer of the 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.”).
Another and more extensive discussion of this practice of transfer upon consent without UDRP findings can be found in the Panel's prior decision in SCI Servs., Inc. v. Demand Domains, Inc., FA 1277774 (Nat. Arb. Forum Sep. 25, 2009).
DECISION
It is ordered that the <victoriassecretjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor, Panelist
Dated: March 5, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page