Victoria's Secret Stores Brand Management, Inc. v. NAIRANAIRA / NAIRANAIRA
Claim Number: FA1202001430063
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complain-ant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington, D.C., USA. Respondent is NAIRANAIRA / NAIRANAIRA (“Respon-dent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretperfume.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 17, 2012; the National Arbitration Forum received payment on February 17, 2012.
On February 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <victoriasecretperfume.org> domain name is register-ed with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the Go-Daddy.com, LLC 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 17, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of March 8, 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, admin-istrative, and billing contacts, and to postmaster@victoriasecretperfume.org. Also on February 17, 2012, the Written Notice of the Complaint, notifying Re-spondent 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 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the VICTORIA’S SECRET trademark, which it uses in connection with the marketing of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear and gift cards.
Complainant has registered the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,146,199, registered January 20, 1981).
Respondent registered the <victoriasecretperfume.org> domain name on April 25, 2011.
Respondent’s <victoriasecretperfume.org> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent is not, and has not been, commonly known by the domain name <victoriasecretperfume.org>.
The <victoriasecretperfume.org> domain name resolves to a website which features a variety linking advertisements from Google’s AdSense program, some of which offer products in competition with the business of Complainant.
Respondent receives “pay-per-click” revenue for referring Internet traffic to the advertised businesses.
Respondent is not affiliated with Complainant, and Respondent has not been licensed or permitted to use the VICTORIA‟S SECRET marks in domain names, on any web site, or in any other manner.
Respondent has no rights to or legitimate interests in the subject domain name.
Respondent was aware of Complainant and of its rights in the VICTORIA’S SECRET mark when it registered the disputed domain name.
The domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. 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 represent-tations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the VICTORIA’S SECRET trademark pursuant to Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark under Policy ¶ 4(a)(i) through its national trademark registration); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a complainant’s national trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <victoriasecretperfume.org> domain name is confusingly similar to Com-plainant’s mark. Respondent made the following changes to the VICTORIA’S SECRET mark in creating the domain name: the deletion of the apostrophe, the deletion of the letter “s,” the addition of the descriptive term “perfume,” the de-letion of spaces between terms of the mark, and the addition of the generic top-level domain (“gTLD”) “.org.” These alterations of the mark in forming the do-main name do not avoid a finding of confusing similarity under the standards of the Policy. 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 a domain name from the mark from which it was created); 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 distinguish-ing difference because punctuation is not significant in determining the similarity of a domain name and a mark.
Similarly, the deletion of a letter from the mark of another in forming a domain name does not avoid a finding of confusing similarity. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark, thus leaving a disputed do-main name confusingly similar to it); see also Keystone Publ’g., Inc. v. Utah-Brides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwed-ding.com> domain name was confusingly similar to a complainant’s UTAH-WEDDINGS.COM mark because the domain name simply lacked the letter “s”).
In the same vein, the addition of a descriptive term to Complainant’s mark does not make the resulting domain name distinct from the mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the ad-dition of the term “batteries,” which described a complainant’s products was insufficient to distinguish a respondent’s <duracellbatteries.com> from a com-plainant’s DURACELL mark); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark).
Finally, the deletion of spaces between terms of the mark and the addition of a gTLD is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See 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. There-fore, the panel finds that the disputed domain name is confusingly similar to the complainant’s mark.
See also 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 of the mark of another and the addition of a gTLD in creating a domain name do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that Respondent’s <victoriasecretperfume.org> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie case that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) in order to shifts to a respond-ent the burden to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, when a respondent fails to respond to a UDRP Com-plaint, a Panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is not affiliated with Complainant and has not been licensed or otherwise permitted to use the VICTORIA’S SECRET trademark. Moreover, the WHOIS record for the <victoriasecretperfume.org> domain name identifies the registrant only as “NAIRANAIRA / NAIRANAIRA”, which does not resemble the domain name. On this record, we conclude that Respondent if it finds that Respondent has not been commonly known by the <victoriasecretperfume.org> domain name, and therefore does not have rights to or legitimate interests in that domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respond-ent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and therefore had no rights to or legitimate interests in that domain under Policy¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
We next note that Complainant alleges, without objection from Respondent, that the <victoriasecretperfume.org> domain name is not being used for either a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name resolves to a website featuring links and advertisements from Google’s AdSense program which feature products offered in competition with the business of Complainant, and that Respondent receives “pay-per-click” revenue for referring Internet traffic to the advertised businesses. This use of the contested domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See, for example, ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name where that respondent used the domain name to operate a website containing links to commercial websites operated in competition with the business of a complainant, which the panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyper-links, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name 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).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent’s operation of the website resolving from the contested domain name, which is confusingly similar to Complainant’s VICTORIA’S SECRET trademark, in the manner alleged in the Complaint has the objective of enriching Respondent by confusing Internet users as to the possibility of an affiliation between it and Complainant. This behavior demonstrates bad faith registration and use of the domain within the contemplation of Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that where a respond-ent profits from its diversionary use of a complainant's mark by means of a do-main name that resolves to commercial websites, and where that respondent fails to contest a UDRP complaint, it may be concluded that that respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iv) by using them to operate a search engine with links to websites featuring the products of a complainant’s commercial competitors).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <victoriasecretperfume.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 30, 2012
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