Victoria's Secret Stores Brand Management, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1202001430891
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 PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretpink.com>, registered with RegisterMatrix.com Corp.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.
On March 2, 2012, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <victoriasecretpink.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the name. RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@victoriasecretpink.com. Also on March 5, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 April 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., is in the business of selling women’s lingerie and other apparel, personal care, and beauty products. Complainant owns trademark registrations for its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered Jan. 20, 1981). Complainant also owns a trademark registration for its VICTORIA’S SECRET PINK mark with the USPTO (Reg. No. 2,820,380 registered Mar. 2, 2004). Complainant uses the VICTORIA’S SECRET mark in connection with over 1,000 retail stores located through the United States, which offers for sale a wide range of items bearing the VICTORIA’S SECRET and VICTORIA’S SECRET PINK marks. Complainant uses the VICTORIA’S SECRET PINK mark in connection with a line of products targeted to collegiate women aged 18-22 years old, including clothing, fragrances, personal care and beauty products.
Respondent, PrivacyProtect.org/Domain Admin, registered the <victoriasecretpink.com> domain name on October 14, 2005. The disputed domain name resolves to a website that attracts consumers for commercial gain by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name.
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.
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.”).
Complainant has USPTO trademark registrations for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered Jan. 20, 1981) and its VICTORIA’S SECRET PINK mark (Reg. No. 2,820,380 registered Mar. 2, 2004). The Panel finds that Complainant has rights in its VICTORIA’S SECRET and VICTORIA’S SECRET PINK marks for the purposes of Policy ¶ 4(a)(i). See 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.”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that Complainant’s trademark registrations suffice to prove it owns rights in the mark under Policy ¶ 4(a)(i), even though the mark is not registered in the country where Respondent is located. See 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).
Complainant contends that Respondent’s <victoriasecretpink.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET and VICTORIA’S SECRET PINK marks. The Panel shall analyze the domain name’s confusing similarity in relation to the VICTORIA’S SECRET PINK mark. Complainant alleges that the disputed domain name incorporates Complainant’s VICTORIA’S SECRET PINK mark in its entirety, absent an apostrophe, two spaces, and the “s” in “Victoria’s.” The Panel notes that the disputed domain name also contains the generic top-level domain (“gTLD”) “.com.” The Panel finds that excluding punctuation, spaces, and one letter, and including a gTLD, does not distinguish a disputed domain name from a mark. 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 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 and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). The Panel therefore finds that Respondent’s <victoriasecretpink.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET PINK mark under 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).
Complainant asserts that Respondent is not commonly known by the <victoriasecretpink.com> domain name. Complainant alleges that the WHOIS information identifies “PrivacyProtect.org/Domain Admin” as the registrant of the disputed domain name. Complainant contends that it did not authorize Respondent to use Complainant’s VICTORIA’S SECRET or VICTORIA’S SECRET PINK marks, and that Respondent is in no way affiliated with Complainant. The Panel finds that Respondent is not commonly known by the <victoriasecretpink.com> domain name according to Policy ¶ 4(c)(ii).See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Complainant argues that Respondent is not using the <victoriasecretpink.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that the disputed domain name resolves to a revolving site that diverts customers from the legitimate VICTORIA’S SECRET website to the revolving sites. Complainant alleges that the revolving sites divert Internet traffic to websites that collect personal information and promote businesses that are unrelated to or are competitors of Complainant. Complainant asserts that there are two websites to which Internet users are diverted upon typing the disputed domain name into their web browser: the first is a website that asks Internet users to enter their name, mobile phone number, and email address to claim a $500 VICTORIA’S SECRET gift card; the second is a generic pay-per-click website that displays various third-party links. A general intent to divert Internet traffic is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Past panels have held that using a disputed domain name to operate a survey website is not 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). See Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (holding that the use of a confusingly similar disputed domain name to offer a complainant’s gift cards in exchange for Internet users completing surveys is not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that the “[r]espondent is not using the disputed domain name 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)” when the disputed domain name resolved to a survey website that purported to offer Internet users a gift card to the complainant’s stores). The Panel finds that Respondent’s use of the disputed domain name to divert Internet traffic to the revolving websites 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 <victoriasecretpink.com> domain name.
Complainant argues that Respondent is using the disputed domain name to attract consumers seeking Complainant and to create confusion. Complainant alleges that Respondent commercially benefits by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s disputed domain name and the resolving websites described above. Complainant also alleges that Respondent’s use of the <victoriasecretpink.com> domain name to funnel traffic to a website offering a gift certificate to Complainant’s retail stores in exchange for providing personal information creates a likelihood of confusion by leading Internet users to believe that the site and its offers are affiliated with or sponsored by Complainant. Respondent’s use of Complainant’s mark to create confusion and attract Internet users for commercial gain is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Privacy Protect, FA 1404667 (Nat. Arb. Forum Sept. 30, 2011) (finding Policy ¶ 4(b)(iv) bad faith registration and use when a disputed domain name resolves to a website that offers visitors gift cards in exchange for completing surveys and providing personal information). The Panel finds that Respondent is commercially benefitting from its use of the domain name by causing confusion as to Complainant’s affiliation or sponsorship of the domain name; therefore, Respondent’s registration and use of the <victoriasecretpink.com> domain name was in bad faith under Policy ¶ 4(b)(iv).
The Panel also finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name and concludes that actual knowledge is adequate evidence of bad faith under Policy ¶ 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretpink.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 24, 2012
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