national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. DomCo / Jorge Dominguez

Claim Number: FA1202001430077

 

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 DomCo / Jorge Dominguez (“Respondent”), Mexico.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecretsmexico.com>, registered with Wild West Domains, LLC.

 

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 17, 2012; the National Arbitration Forum received payment on February 17, 2012.

 

On February 17, 2012, Wild West Domains, LLC. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretsmexico.com> domain name is registered with Wild West Domains, LLC. and that Respondent is the current registrant of the name.  Wild West Domains, LLC. has verified that Respondent is bound by the Wild West Domains, 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 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@victoriasecretsmexico.com.  Also on February 22, 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.

 

A timely Response was received and determined to be complete on March 12, 2012.

 

On March 22, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    1. Complainant began using its VICTORIA’S SECRET mark on June 12, 1977 in connection with the sale of women’s apparel, personal care and beauty products, and gift cards.
    2. Complainant owns multiple 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).
    3. Respondent registered the <victoriasecretsmexico.com> domain name on October 17, 2011.
    4. The disputed domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
    5. Respondent is not commonly known by the disputed domain name.
    6. The <victoriasecretsmexico.com> domain name resolves to the <accesoriosparadamas.com> website, which is a Spanish language website that purports to sell Complainant’s products and the products of Complainant’s competitors.
    7. Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
    8. Respondent’s registration and use of the <victoriasecretsmexico.com> domain name disrupts Complainant’s business.
    9. Respondent registered and uses the disputed domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the resolving website.
    10. Respondent had actual and constructive knowledge of Complainant’s rights in the VICTORIA’S SECRET mark.

 

B. Respondent

1.    Respondent registered the disputed domain name for a third party and did not know of Complainant’s VICTORIA’S SECRET mark.

2.    Respondent consents to the transfer of the <victoriasecretsmexico.com> domain name.

 

DISCUSSION

Respondent consents to transfer the <victoriasecretsmexico.com> domain name to Complainant.  However, after the initiation of this proceeding, Wild West Domains, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.  As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant, the Panel decides to forego the traditional UDRP analysis and order an immediate transfer of the <victoriasecretsmexico.com> domain name.  See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).

 

DECISION

The Panel concludes that relief shall be GRANTED.

 

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

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

Dated:  April 5, 2012

 

 

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