Victoria's Secret Stores Brand Management, Inc. v. Elaine Veronica
Claim Number: FA1202001430541
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 Elaine Veronica (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretdress.com>, registered with Tucows, 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.
Jonas Gulliksson as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum electronically on February 21, 2012; the National Arbitration Forum received payment on February 21, 2012.
On February 21, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretdress.com> domain name is registered with Tucows, Inc. and that the Respondent is the current registrant of the name. Tucows, Inc. has verified that the Respondent is bound by the Tucows, Inc. 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 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2012 by which the Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on the Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@victoriassecretdress.com. Also on February 24, 2012, the Written Notice of the Complaint, notifying the Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to the Respondent via post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 7, 2012.
On March 13, 2012, pursuant to the Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson 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.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant uses the famous VICTORIA’S SECRET mark as the name of more than 1,000 retail stores. The Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981). The Respondent’s disputed domain name is confusingly similar because “dress” describes a product that the Complainant sells and it does not differentiate the domain from the Complainant’s VICTORIA’S SECRET mark.
The Respondent is not authorized to use the Complainant’s mark in any way, including use on the Internet in the form of a domain. The Respondent is not commonly known by the disputed domain name. The disputed domain name resolves to a website offering goods for sale that purport to be goods from the Complainant. Because of this, the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent’s disputed domain name disrupts its business by selling goods that are purportedly from the Complainant’s own product lines on the website to which the disputed domain name resolves. The Respondent commercially benefits from the sale of these goods under the Complainant’s VICTORIA’S SECRET mark. The Respondent has, without the Complainant’s consent, registered the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and misleadingly divert Internet traffic to the Respondent’s website for commercial gain.
The Respondent also had actual or constructive knowledge of the Complainant and its rights in the VICTORIA’S SECRET mark based upon the fame of the Complainant’s mark and the nature of the Respondent’s use of the disputed domain name. The Respondent’s actual knowledge further supports a finding of bad faith registration and use.
B. Respondent
When ordering the disputed domain name, the Respondent was not aware of any rule prohibiting the use of “victoria secret” in a domain name and there was no notification that it couldn’t be ordered. Immediately upon hearing of the Complainant’s issue with the Respondent’s registration of the disputed domain name the Respondent asked for suspension of the domain. The website to which the disputed domain name resolves cannot be accessed anymore.
The Panel finds that the following registered United States Patent and Trademark Office (USTPO) service marks and trademarks are owned by the Complainant :
- VICTORIA’S SECRET trademark, Reg. No. 1,146,199 registered January 20, 1981 in International Class 25,
- VICTORIA’S SECRET trademark and service mark, Reg. No. 1,908,042 registered August 1, 1995 in International Classes 3, 4, 9, 16, 20, 21, 22, 24, 25, 28 and 42.
The disputed domain name was registered on October 15, 2011.
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."
The Complainant has submitted evidence of the registrations of the VICTORIA’S SECRET trademarks. Previous UDRP panels have determined that the registration of a trademark with the USPTO is sufficient for a complainant to establish rights in its mark under the Uniform Domain Name Dispute Resolution Policy (the “Policy”), paragraph 4(a)(i), regardless of where a respondent operates or resides. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to the Policy, paragraph 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). Accordingly, the Panel finds that the submitted evidence of the Complainant’s trademark registrations is sufficient for the Complainant to establish rights in the asserted marks under the Policy, paragraph 4(a)(i).
The Panel finds that the disputed domain name includes the entire portion of the Complainant’s VICTORIA’S SECRET trademark capable of being included in a domain. The disputed domain name differs from the trademark by the removed apostrophe and space between the terms, the added term “dress” and the generic top-level domain (“gTLD”) “.com”. The Panel finds that the differences between the disputed domain name and the Complainant’s trademark do not remove the disputed domain name form the realm of confusing similarity under Policy ¶ 4(a)(i). See 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 Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
The Respondent has not made any contentions regarding the first element of the Policy.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and the first element of the Policy is thus fulfilled.
The Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, paragraph 4(a)(ii), and then the burden shifts to the 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 the Policy, paragraph 4(a)(ii), before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name)
The Complainant has stated that it has not authorized the Respondent to use the VICTORIA’S SECRET trademark in the disputed domain name and that the Respondent is not commonly known by the disputed domain name. The Panel finds that the WHOIS information fails to provide evidence that the Respondent is commonly known by the disputed domain name pursuant to 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
According to the Complainant the disputed domain name resolves to a website offering goods that purport to be Complainant’s own goods. The Panel notes that the actual website sells women’s apparel and accessories and, with the exception of the domain name itself, the website does not include any references to the Complainant or to the Complainant’s products. However, the Panel finds that the Respondent’s offering of Complainant’s goods or similar goods of the Complainant’s competitors demonstrates that the Respondent is not making 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 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).
The Respondent has not made any contentions regarding the second element of the Policy.
Altogether, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has not proved otherwise. The second element of the Policy is thus fulfilled.
The Complainant has argued that the disputed domain name disrupts its business, indicating bad faith registration and use. The Complainant has stated that the Respondent offers products that appear to be the Complainant’s own legitimate offerings from the website to which the disputed domain name resolves and that Internet users may arrive at Respondent’s website and then purchase products directly from Respondent instead of Complainant. The Complainant has asserted that the Respondent, by selling goods that appear to be from the Compliant and most likely charging Internet users to purchase goods from its website, is gaining commercially from the disputed domain name, which constitutes bad faith registration and use. The 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 disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark.
The Respondent has asserted that it had no knowledge of any rule prohibiting its registration of a domain name including the words “victoria secret”. However, the Respondent has not in its response stated whether or not it had knowledge of the Complainant’s trademark prior to the registration of the disputed domain name.
Whether the Respondent was aware of any rule prohibiting its registration of the disputed domain name is not relevant for this case. The requirements for a transfer of the domain name are those mentioned above. If the Respondent’s registration and use fulfills those requirements it is irrelevant whether the Respondent has interpreted the ICANN Rules or the law correctly or not. Error in point of law is then no valid excuse.
The Panel finds that the Respondent’s use of the disputed domain name to sell products of the Complainant or the Complainant’s competitors disrupts the Complainant’s business and, as a result, demonstrates bad faith registration and use under Policy 4(b)(iii). See also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
The Panel also finds that the disputed domain name has been used to market or sell the Complainant’s products or products of its competitors, to give the Respondent commercial gain. This use indicates registering and use of the disputed domain name in bad faith under the Policy 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also 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 Mary Kay, Inc. v. IQ Management Corp., FA0338446 (Nat.Arb.Forum Nov. 17, 2004)(finding bad faith under Policy 4(b)(iv) where the domain name resolved to a website advertising the unauthorized sale of complainant’s products, because respondent commercially benefitted from diverting traffic from complainant’s site to respondent’s)
The Panel finds that the Respondent has not contested the Complainant’s statement that it had knowledge of the Complainant and its trademark or that it has gained commercially from the disputed domain name. Further, the Panel finds it highly improbable that the Respondent has selected arbitrarily the domain name’s word combination without having prior knowledge of the Complainant’s rights and business. In accordance therewith, it is the Panel’s firm view that the Respondent has registered the disputed domain names in awareness of the Complainant’s rights.
The Panel finds no indications that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark and service mark at issue. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and that the third element of the Policy is thus fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretdress.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson, Panelist
Dated: March 22, 2012
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