Victoria's Secret Stores Brand Management, Inc. v. Andrew Blazewicz / N/A
Claim Number: FA1202001428773
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 Andrew Blazewicz / N/A (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com>, registered with Netearth One Inc. d/b/a Netearth.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2012; the National Arbitration Forum received payment on February 9, 2012.
On February 9, 2012, Netearth One Inc. d/b/a Netearth confirmed by e-mail to the National Arbitration Forum that the <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names are registered with Netearth One Inc. d/b/a Netearth and that Respondent is the current registrant of the names. Netearth One Inc. d/b/a Netearth has verified that Respondent is bound by the Netearth One Inc. d/b/a Netearth 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@pinkvictoriasecret.net, postmaster@victoriasecretshoes.net, postmaster@victoriasecretmakeup.com, postmaster@victoriassecretswim.net, postmaster@victoriasecretbikini.net, postmaster@victoriasecretonline.net, postmaster@victoriasecretstore.net, postmaster@victoriasecretswim.net, and postmaster@victoriasecretyogapants.com. Also on February 10, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent’s <pinkvictoriasecret.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark.
2. Respondent does not have any rights or legitimate interests in the <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names.
3. Respondent registered and used the <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., uses the VICTORIA’S SECRET mark in connection with the advertisement and sale of women’s lingerie and other apparel, personal and beauty care products, swimwear, outerwear, and gift cards. Complainant uses the VICTORIA’S SECRET PINK mark for a line of products targeted to collegiate women between the ages of 18 and 22. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for the VICTORIA’S SECRET (e.g., Reg. No. 1,146,199 registered January 20, 1981) and VICTORIA’S SECRET PINK marks (e.g., Reg. No. 2,820,380 registered March 2, 2004).
Respondent, Andrew Blazewicz / N/A, registered the <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names on August 16, 2011. Respondent’s <pinkvictoriasecret.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, and <victoriasecretyogapants.com> domain names resolve to storefront websites that purport to sell Complainant’s products without authorization. Respondent’s <victoriasecretswim.net> domain name resolves to an empty storefront website, while the <victoriasecretshoes.net> domain name fails to resolve to an active website.
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 has multiple trademark registrations with the USPTO for the VICTORIA’S SECRET (e.g., Reg. No. 1,146,199 registered January 20, 1981) and VICTORIA’S SECRET PINK marks (e.g., Reg. No. 2,820,380 registered March 2, 2004). Complainant’s trademark registrations establish Complainant’s rights in its marks under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
First, Complainant argues that the <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark. The domain names above all delete the space between the terms and the apostrophe from Complainant’s mark while adding the generic top-level domain (“gTLD”) “.com” or “.net.” Further, all but one of the disputed domain names omits the letter “s” from Complainant’s mark. Lastly, all of the domain names add one or more generic or descriptive terms as a suffix to Complainant’s mark. The Panel finds that the changes made by Respondent are not sufficient to remove the disputed domain names from the realm of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Second, Complainant alleges that Respondent’s <pinkvictoriasecret.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark. Complainant notes that the domain name removes the spaces between the terms of its mark, as well as removing the apostrophe and the letter “s.” Further Complainant argues that the domain name “transposes the order of Complainant’s VICTORIA’S SECRET PINK mark.” Lastly, Complainant notes that added gTLD “.net” does not offset the confusingly similar nature of the disputed domain name. The Panel finds that the <pinkvictoriasecret.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark under Policy ¶ 4(a)(i). See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. 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). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names, “either as a business, individual, or other organization.” The WHOIS information indicates that “Andrew Blazewicz / N/A” is the registrant of all of the domain names in the instant proceeding. The Panel finds that based on all of the information on record, Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also 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).
Complainant contends, and submits screenshot evidence to show, that Respondent’s <pinkvictoriasecret.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, and <victoriasecretyogapants.com> domain names resolve to storefront websites that purport to sell Complainant’s products without authorization. The Panel finds that such use of the confusingly similar domain names does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Respondent’s <victoriasecretswim.net> domain name resolves to an empty storefront website, while the <victoriasecretshoes.net> domain name fails to resolve to an active website. The Panel determines that both of the domain names are inactive for purposes of the Policy. Therefore, the Panel finds that this failure to make an active use of the <victoriasecretswim.net> and <victoriasecretshoes.net> domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s use of the <pinkvictoriasecret.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, and <victoriasecretyogapants.com> domain names to sell Complainant’s products without authorization creates a disruption to Complainant’s business. Prior panels have determined that the offering of a complainant’s goods through a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). The Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent is clearly profiting from the sale of goods through the <pinkvictoriasecret.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, and <victoriasecretyogapants.com> domain names. Complainant argues that Respondent is utilizing the confusingly similar domain names to attract Internet users to its websites. The Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
Complainant also argues that Respondent’s non-use of the <victoriasecretswim.net> and <victoriasecretshoes.net> domain names also constitutes bad faith registration and use under Policy ¶ 4(a)(iii). The Panel finds that Respondent has also registered and used the <victoriasecretswim.net> and <victoriasecretshoes.net> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Lastly, Complainant contends that based upon its trademark registrations and the manner in which Respondent used the disputed domain names, Respondent could not have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel concludes that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <pinkvictoriasecret.net>, <victoriasecretshoes.net>, <victoriasecretmakeup.com>, <victoriassecretswim.net>, <victoriasecretbikini.net>, <victoriasecretonline.net>, <victoriasecretstore.net>, <victoriasecretswim.net>, and <victoriasecretyogapants.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 21, 2012
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