Victoria’s Secret Stores Brand Management, Inc. v. Charles Post / CXDXN
Claim Number: FA1202001429800
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 Charles Post / CXDXN (“Respondent”), Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretcouponcodes.us>, registered with eNom, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2012; the National Arbitration Forum received a hard copy of the Complaint and payment on February 16, 2012.
On Feb 16, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcouponcodes.us> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 21, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretcouponcodes.us> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretcouponcodes.us> domain name.
3. Respondent registered or used the <victoriasecretcouponcodes.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant alleges that it owns numerous trademark registrations with the USPTO for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). Past UDRP panels have held that similar trademarks were sufficient to establish rights in a mark under UDRP ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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.”). Therefore, the Panel holds that Complainant owns rights in its VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant further contends that Respondent’s <victoriassecretcouponcodes.us> domain name differs from Complainant’s mark by the removal of the apostrophe and space in Complainant’s mark and the addition of the generic terms “coupon” and “codes.” The Panel notes that the disputed domain name also contains the country-code top-level domain (“ccTLD”) “.us.” Prior UDRP panels have determined that the removal of an apostrophe does not remove a disputed domain name from the realm of confusing similarity. See 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 Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Moreover, previous UDRP panels have concluded that the addition of generic terms did not adequately distinguish the disputed domain name from the complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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). Finally, past panels have found the removal of a space and the addition of a ccTLD are irrelevant to a Policy ¶ 4(a)(i) analysis. See Future Steel Holdings Ltd. v. Majercik, FA 224964 (Nat. Arb. Forum Mar. 15, 2004) (finding that the omission of the space between the words and the addition of the ccTLD “.us” does not significantly distinguish the domain name from the mark.”); see also Acton Educ. Servs. v. West Coast Univ. Int’l Inc., FA 1191541 (finding the removal of the spaces and the addition of the ccTLD “.us” are irrelevant under the Policy). The Panel agrees with this precedent. The Panel concludes that Respondent’s <victoriassecretcouponcodes.us> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant claims that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <victoriassecretcouponcodes.us> domain name. Prior panels have found that a respondent fails to demonstrate rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) if the respondent does not own any trademarks or service marks in the domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i).
Complainant argues that Respondent is not affiliated with Complainant and that Respondent is not licensed or permitted to use the VICTORIA’S SECRET mark in the <victoriassecretcouponcodes.us> domain name. The Panel notes that the WHOIS information lists “Charles Post / CXDXN” as the registrant of the disputed domain name, which the Panel concludes is not similar to the disputed domain name. The Panel further notes that Respondent’s failure to submit a Response ensures that Respondent did not present any evidence that it is commonly known by the disputed domain name. Previous UDRP panels have concluded that a respondent is not commonly known by a disputed domain name if the respondent was not authorized to register the disputed domain name by the complainant, the WHOIS information is not similar to the disputed domain name, and the respondent failed to submit evidence that it is commonly known by the domain name. 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). Thus, the Panel concludes that Respondent is not commonly known by the <victoriassecretcouponcodes.us> domain name for the purposes of Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s <victoriassecretcouponcodes.us> domain name formerly resolved to a website that hosted third-party hyperlinks that are unrelated to Complainant’s business. Complainant alleges that Respondent commercially benefited from these hyperlinks. The Panel notes that Complainant’s screenshots of the resolving website appear to include hyperlinks and information regarding Complainant’s products. See Complainant’s Exhibit F. Prior UDRP panels have found that such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under UDRP ¶ 4(c)(i)); see also 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). Consequently, the Panel holds that Respondent’s prior use of the <victoriassecretcouponcodes.us> domain name was neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the disputed domain name.
Complainant lastly alleges that Respondent currently fails to make an active use of the <victoriassecretcouponcodes.us> domain name. Complainant provides the Panel with a screenshot to support its allegations. See Complainant’s Exhibit E. Previous panels have maintained that a respondent’s failure to make an active use of a disputed domain name demonstrates a respondent’s lack of rights and legitimate interests under UDRP ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also 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 [UDRP] ¶ 4(a)(ii).”). The Panel agrees. The Panel holds that Respondent lacks rights and legitimate interests in the <victoriassecretcouponcodes.us> domain name under Policy ¶ 4(a)(ii) based on its current failure to make an active use of the domain name.
As noted above, Complainant contends that Respondent’s <victoriassecretcouponcodes.us> domain name formerly resolved to a website that hosted unrelated, third-party hyperlinks, from which Respondent commercially benefited. Complainant argues that Respondent attempted to attract Internet users to the resolving website by creating a likelihood of confusion with Complainant’s mark as to the source or association with Respondent’s disputed domain name. The Panel notes that Respondent registered and used the confusingly similar disputed domain name and that the resolving website contained information regarding Complainant’s products, which the Panel finds evidence Respondent’s attempt to create confusion. Past UDRP panels have determined that the hosting of unrelated hyperlinks at a website resolving from a confusingly similar disputed domain name evidences a respondent’s bad faith registration and use. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to UDRP ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent is guilty of Policy ¶ 4(b)(iv) bad faith registration and/or use of the <victoriassecretcouponcodes.us> domain name.
Complainant further argues that Respondent’s failure to make an active use of the <victoriassecretcouponcodes.us> domain name demonstrates Respondent’s bad faith registration and use. Previous UDRP panels have found both bad faith registration and use when the respondent fails to use a disputed domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); 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 UDRP). The Panel accordingly concludes that Respondent’s failure to make an active use is evidence that Respondent registered and/or uses the <victoriassecretcouponcodes.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant also contends that in light of the fame and notoriety of Complainant's VICTORIA’S SECRET mark, it is inconceivable that Respondent could have registered the <victoriassecretcouponcodes.us> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here 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 [UDRP]."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Prior UDRP panels have found that actual knowledge is adequate evidence of bad faith under UDRP ¶ 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 agrees. The Panel concludes that Respondent’s actual knowledge of Complainant’s rights in the VICTORIA’S SECRET mark evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretcouponcodes.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 16, 2012
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