Victoria's Secret Stores Brand Management, Inc. v. Delibas Mircea
Claim Number: FA1201001426806
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington, D.C. Respondent is Delibas Mircea (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretdeal.info>, 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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2012; the National Arbitration Forum received payment on January 27, 2012.
On January 27, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretdeal.info> 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 January 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@victoriasecretdeal.info. Also on January 31, 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 21, 2012.
On February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
- Complainant is a company that sells, among other things, women’s lingerie, and other apparel, personal care and beauty products, swimwear, outerwear and gift cards. Complainant operates more than 1,000 retail stores in the United States, and its sales in 2010 exceeded $5.5 Billion.
- Complainant has used its famous VICTORIA’S SECRET trademark in connection with its business since at least 1977. It has become one of the most recognized marks in the world.
- Complainant has also marketed its merchandise through its domain name, <victoriassecret.com>, since 1998. Complainant’s mark has been displayed prominently on both online and television transmissions of its annual fashion shows since 2001.
- Complainant owns 32 valid registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark. That mark has gained significant goodwill, widespread recognition and fame, becoming the unique identifier of Complainant and its merchandise.
- The disputed domain name, <victoriasecretdeal.info>, is confusingly similar to Complainant’s trademark. The name includes nearly all of the mark. Absent only are one “s,” the apostrophe and the space between the terms composing the mark. Moreover, the disputed domain name merely appends the generic term “deal,” which does not diminish the likelihood of confusion between the domain name and Complainant’s mark.
- Respondent has no rights or legitimate interests in the disputed domain name. The name redirects internet users to a website that offers those users a “free” gift card, ostensibly from Complainant, in exchange for providing personal information and completing applications for offers from third parties unrelated to Complainant. Respondent probably receives referral fees for such application submissions or benefits commercially otherwise from said internet traffic, neither of which activities would constitute a bona fide offering of goods or services.
- Respondent is not affiliated with Complainant and is not permitted or licensed to use Complainant’s mark in conjunction with a website or in any manner. Nothing in Respondent’s registration record suggests that he is commonly known as the disputed domain name. Furthermore, Respondent is not making legitimate noncommercial or fair use of the name.
- Respondent registered and is using the disputed domain name in bad faith. Respondent registered the name with the intent to lure internet users to a website for Respondent’s commercial gain by creating the likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of that site.
- Respondent’s use of the disputed domain name also acts to tarnish Complainant’s mark. Given the fame of Complainant’s mark, Respondent was aware of it and sought only to trade off the reputation and goodwill associated with that mark.
B. Respondent
- Respondent agrees that it registered the disputed domain name without proper approval with respect to Complainant’s trademark. Respondent agrees to transfer the name without delay.
Complainant is a well-known American company that sells ladies’ lingerie and related goods though a large network of retail stores. It owns several valid USPTO registrations for its VICTORIA’S SECRET mark (e.g., Registration No. 1,146, 199 issued January 20, 1981).
Respondent is the owner of the disputed domain name, <victoriasecretdeal.info>, which was registered on July 21, 2011.
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.
Preliminary Issue: Consent to Transfer
In his Response, Respondent has consented unequivocally to the transfer of the disputed domain name, <victoriasecretdeal.info>. The Panel finds that the disputed domain name is similar to Complainant’s VICTORIA’S SECRET trademark, and that Complainant would have a legitimate interest in the name. As Complainant’s mark is world famous, the Panel believes without close inspection that it is highly unlikely that anyone who lacks affiliation or license, such as Respondent, could lay claim in good faith to rights or legitimate interests in the disputed domain name. Thus, in the interest of common sense and judicial economy, the Panel will dispense with the rigors of a full UDRP analysis in this case and agree to implement the desires of both parties that the disputed domain name be transferred without delay. See Citigroup Inc. v. Texas International Property Associates- NA NA, FA 1210904 (Nat. Arb. Forum Aug. 5, 2008) (“There is no need for a decision or findings on the merits where the respondent, by consenting to the requested relief, obviates the necessity for such a ruling.”); see also Disney Enterprises, Inc. v. Elmer Morales, FA 475191 (Nat. Arb. Forum June 24, 2005); see also Boehringer Ingelheim International GmbH v. Modern Ltd. – Cayman Web. Development, FA 133625 (Nat. Arb. Forum Jan. 9, 2003); see also Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000).
Having established that Complainant has an interest in the domain names and that Respondent consents to the requested relief, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretdeal.info> domain name be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: March 11, 2012
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