national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Thomas Strock

Claim Number: FA1202001428561

 

PARTIES

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 Thomas Strock (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretcouponcode.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.

 

On February 8, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcouponcode.com> 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 February 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@victoriassecretcouponcode.com.  Also on February 10, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <victoriassecretcouponcode.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 <victoriassecretcouponcode.com> domain name.

 

3.    Respondent registered and used the <victoriassecretcouponcode.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria's Secret Stores Brand Management, Inc., registered the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981).  Complainant began operating under its VICTORIA’S SECRET mark on June 12, 1977 in order to offer women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.  Complainant owns the <victoriassecret.com> domain name. 

 

Respondent, Thomas Strock, registered the <victoriassecretcouponcode.com> domain name on April 7, 2011.  The disputed domain name resolves to a website containing information regarding Complainant and populated with advertisement hyperlinks that resolve to third parties that are either unrelated to Complainant or compete with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges that its USPTO trademark registration for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981) sufficiently demonstrates rights in its mark under Policy ¶ 4(a)(i).  After reviewing the USPTO trademark registration certificates, the Panel agrees with Complainant and holds that Complainant owns rights in its VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark 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 contends that Respondent’s <victoriassecretcouponcode.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because Respondent simply appends the generic terms “coupon” and “code” to Complainant’s mark, absent the apostrophe and space.  The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.”  After examining the disputed domain name, the Panel determines that the addition of the generic terms “coupon” and “code” does not sufficiently differentiate the disputed domain name from Complainant’s mark.  See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).  Moreover, the Panel finds that the removal of the space and the apostrophe and the addition of the gTLD are irrelevant to a Policy ¶ 4(a)(i) analysis because spaces and apostrophes are not reproducible in a domain name and a top-level domain is required.  See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  Therefore, the Panel finds that Respondent’s <victoriassecretcouponcode.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

The Panel deems Policy ¶ 4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <victoriassecretcouponcode.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <victoriassecretcouponcode.com> domain name.  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).  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.”); see also 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).

 

Complainant argues that Respondent is not affiliated with Complainant and that Respondent is not licensed or permitted to use Complainant’s VICTORIA’S SECRET mark.  Complainant also notes that the WHOIS information lists “Thomas Strock” as the registrant of the disputed domain name.  Respondent did not respond to this case and did not contradict any of the evidence in the record.  Consequently, the Panel concludes that Respondent is not commonly known by the <victoriassecretcouponcode.com> domain name for the purposes of Policy ¶ 4(c)(ii).  See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant claims that Respondent’s <victoriassecretcouponcode.com> domain name resolves to a website that features advertisement hyperlinks that resolve to third-party websites that are either unrelated to or competing with Complainant’s apparel and accessories business.  After examining Complainant’s screenshots, the Panel notes that Respondent also provides information about Complainant on the resolving website.  The Panel determines that the existence of the hyperlink advertisements, both unrelated and competing, is sufficient for the Panel to find that Respondent makes 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 <victoriassecretcouponcode.com> domain name.  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel deems Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

Complainant does not make any argument under Policy ¶ 4(a)(iii), aside from the instruction to “Josh” to fill in the bad faith section.  However, the Panel will examine the facts in evidence to determine if Respondent registered or uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

 

The Panel notes that Respondent’s <victoriassecretcouponcode.com> domain name resolves to a website that contains information regarding Complainant’s business and products.  The Panel finds displaying this information and Respondent’s registration of the confusingly similar disputed domain name are evidence that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name.  As noted above, Complainant contends, and the screenshots show, that Respondent also hosts unrelated and competing hyperlinks at the resolving website.  Complainant asserts that Respondent commercially gains from the hyperlinks and the Panel agrees with this assertion.  Therefore, the Panel concludes that Respondent attempts to commercially benefit from the confusion as to Complainant’s affiliation with the <victoriassecretcouponcode.com> domain name.  Consequently, the Panel determines that Respondent registered and uses the <victoriassecretcouponcode.com> domain name in bad faith under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

The Panel deems Policy ¶ 4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoriassecretcouponcode.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  March 20, 2012

 

 

 

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