national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. ADVmediaHOUSE / Ardall Celina

Claim Number: FA1202001429609

 

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 ADVmediaHOUSE / Ardall Celina (“Respondent”), Republic of Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lovevictoriassecret.com>, registered with eNom.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2012; the National Arbitration Forum received payment on February 15, 2012.

 

On February 15, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <lovevictoriassecret.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name.  eNom.com has verified that Respondent is bound by the eNom.com 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 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@lovevictoriassecret.com.  Also on February 15, 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 12, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

  1. Complainant, Victoria's Secret Stores Brand Management, Inc., alleges:
    1. Complainant is the United States record owner of the VICTORIA’S SECRET mark.
    2. Complainant began using its VICTORIA’S SECRET mark on June 12, 1977.
    3. Complainant uses the VICTORIA’S SECRET mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.
    4. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).
    5. Respondent registered the <lovevictoriassecret.com> domain name on October 18, 2011.
    6. Complainant uses its VICTORIA’S SECRET mark in over 1,000 retail stores and on its website, located at <victoriassecret.com>.
    7. Respondent’s <lovevictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark because the only alterations Respondent makes to Complainant’s mark is the additions of the generic term “love” and the generic top-level domain (“gTLD”) “.com” and the removal of the space and the apostrophe in Complainant’s mark.
    8. Respondent is not affiliated with Complainant and is not licensed or permitted to use Complainant’s VICTORIA’S SECRET mark.
    9. Respondent’s <lovevictoriassecret.com> domain name resolves to an Albanian language website which contains a login screen and registration screen.
    10. After registering with Respondent, Internet users may purchase merchandise that purports to be Complainant’s merchandise.
    11. Such a use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
    12. Respondent’s sale of merchandise purporting to be Complainant’s merchandise disrupts Complainant’s business.
    13. Respondent registered and uses the <lovevictoriassecret.com> domain name for the purpose of attempting to attract, for commercial gain, Internet users to Respondent’s website by creating confusion about Complainant’s association with the domain name.
    14. Respondent had actual and constructive knowledge of Complainant’s VICTORIA’S SECRET mark when Respondent registered the <lovevictoriassecret.com> domain name.

 

  1. Respondent, ADVmediaHOUSE / Ardall Celina, did not submit a Response.

 

FINDINGS

 

Complainant uses the VICTORIA’S SECRET mark in connection with the sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).

 

Respondent registered the <lovevictoriassecret.com> domain name on October 18, 2011.  Respondent’s <lovevictoriassecret.com> domain name resolves to an Albanian language website which contains a login screen and registration screen.  After registering with Respondent, Internet users may purchase merchandise that purports to be Complainant’s merchandise.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant has rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).  Complainant began using its mark in 1977 in connection with women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.  Although Respondent resides or operates in the Republic of Serbia, the Panel still concludes that Complainant’s trademark registrations with the USPTO sufficiently demonstrate Complainant’s rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Respondent’s <lovevictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.  The disputed domain name contains Complainant’s entire mark, absent the space and the apostrophe, which are not reproducible in a domain name.  The disputed domain name also contains the generic term “love.”  The disputed domain name also features the gTLD “.com.” A top-level domain is required in all domain names.  The Panel finds the addition of the gTLD and the removal of the apostrophe and space are irrelevant to a Policy ¶ 4(a)(i) analysis.  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.”).  Moreover, the Panel finds the addition of a generic term to Complainant’s mark does not sufficiently distinguish the disputed domain name.  See 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)). The Panel finds that Respondent’s <lovevictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Respondent is not commonly known by the <lovevictoriassecret.com> domain name and is not affiliated with Complainant.  Respondent is not licensed or permitted to use Complainant’s VICTORIA’S SECRET mark.  The WHOIS information for the disputed domain name lists the registrant of the domain name as “ADVmediaHOUSE / Ardall Celina.”  The Panel finds that Respondent is not commonly known by the <lovevictoriassecret.com> domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is 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).

 

Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <lovevictoriassecret.com> domain name.  Respondent’s <lovevictoriassecret.com> domain name resolves to an Albanian language website that contains a login screen and registration form.  After registering with Respondent, Internet users are allowed to purchase merchandise that purports to be Complainant’s merchandise, which the Panel infers is either unauthorized or counterfeit merchandise.  Respondent commercially benefits from the sale of merchandise on the resolving website and such a sale competes with Complainant’s business.  The Panel finds that Respondent’s use of the <lovevictoriassecret.com> domain name to sell unauthorized or counterfeit merchandise in competition with Complainant is 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 <lovevictoriassecret.com> domain name.  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the <lovevictoriassecret.com> domain name to sell merchandise purporting to be Complainant’s merchandise disrupts Complainant’s business, which constitutes bad faith registration and use 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 Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).

 

Respondent attempts to commercially gain by creating confusion as to Complainant’s association with the domain name and resolving website.  Respondent commercially gains from the sale of merchandise at the resolving website. As Respondent’s use of the VICTORIA’S SECRET mark on the website and in the disputed domain name creates confusion as to Complainant’s sponsorship, affiliation, or endorsement of the resolving website, the Panel finds that Respondent registered and uses the <lovevictoriassecret.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).

 

The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."

 

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 <lovevictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 26, 2012

 

 

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