Victoria's Secret Stores Brand Management, Inc. v. Counter Balance Enterprises Limited / Counter Balance
Claim Number: FA1202001430902
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 Counter Balance Enterprises Limited / Counter Balance (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAM
The domain name at issue is <victoriasecretcatalog.com>, registered with Fabulous.com Pty Ltd.
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.
Judge Harold Kalina (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 February 26, 2012, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <victoriasecretcatalog.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 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@victoriasecretcatalog.com. Also on February 28, 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 March 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 makes the following assertions:
1. Respondent’s <victoriasecretcatalog.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriasecretcatalog.com> domain name.
3. Respondent registered and used the <victoriasecretcatalog.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant, Victoria's Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards in its retail stores throughout the United States and through its website and catalogue. Complainant has registered its VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995;
Reg. No. 2,455,260 registered May 29, 2001; &
Reg. No. 3,480,533 registered August 5, 2008.
Respondent, Counter Balance Enterprises Limited / Counter Balance, registered its <victoriasecretcatalog.com> domain name on November 27, 2005. The disputed domain name resolves to a website featuring numerous advertisements and search listings in the form of pay-per-click links for third-party businesses both unrelated to and competing with Complainant.
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 argues that it has rights in the VICTORIA’S SECRET mark because it owns multiple trademark registrations for the mark with the USPTO:
Reg. No. 1,146,199 registered January 20, 1981;
Reg. No. 1,908,042 registered August 1, 1995;
Reg. No. 2,455,260 registered May 29, 2001; &
Reg. No. 3,480,533 registered August 5, 2008.
The Panel finds that registering a trademark with the USPTO successfully proves Complainant has rights in the mark under Policy ¶ 4(a)(i), even when the mark is not registered in Respondent’s specific country. See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); 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).
Complainant argues that Respondent’s <victoriasecretcatalog.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Complainant asserts that the disputed domain name includes the mark but deletes the apostrophe, the space between the terms, and the final letter “s” in the term “victoria’s.” Complainant then alleges that Respondent adds the generic term “catalog” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that removed apostrophes and spaces are inconsequential under a Policy ¶ 4(a)(i) analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see 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.”). The Panel also holds that the omission of a single letter and the addition of a generic term fail to differentiate the disputed domain name from the mark. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Finally, the Panel determines that a gTLD cannot prevent confusing similarity as it is a required element in domain names. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel thus concludes that Respondent’s <victoriasecretcatalog.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
The Panel determines Complainant has proven Policy ¶ 4(a)(i).
In accord with the procedural burdens laid out in Policy ¶ 4(a)(ii), Complainant presented a prima facie case arguing against Respondent’s rights and legitimate interests that is sufficient to shift the burden of proving rights and legitimate interests to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Respondent declined to respond, however, and thus presented the Panel with nothing but silence in defense of its position. Without further argument from Respondent, the Panel may assume that Complainant’s allegations are true and hold that Respondent lacks rights and legitimate interests. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). The Panel elects to consider the full record, however, in light of the Policy ¶ 4(c) factors in order to make an independent determination on Respondent’s rights and legitimate interests.
Complainant contends that Respondent is not affiliated with Complainant, nor has Respondent been licensed or permitted to use the VICTORIA’S SECRET mark in any way. Complainant asserts that the resolving website is not affiliated with or endorsed by Complainant. Complainant alleges that the WHOIS information for the disputed domain name lists the registrant as “Counter Balance Enterprises Limited / Counter Balance.” Complainant contends that nothing in the WHOIS information or other evidence in the record implies that Complainant is commonly known by the <victoriasecretcatalog.com> domain name. The Panel agrees and holds that Respondent has consequently not shown rights and legitimate interests in the disputed 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant alleges that Respondent’s <victoriasecretcatalog.com> domain name resolves to a website advertising unrelated and competing companies and products via pay-per-click links. Complainant’s submitted screenshot reveals that the links have titles such as “Victoria Secret,” “Swimwear,” “Satin Lingerie,” Employment,” and “Job Seekers,” among others. Hosting pay-per-click directories at confusingly similar domain names has frequently been found to be inconsistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel accordingly agrees both with Complainant’s arguments and this precedent, concluding that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use as required by Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel determines Complainant has proven Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using the VICTORIA’S SECRET mark in the <victoriasecretcatalog.com> domain name in order to attract and drive traffic to the resolving website, which promotes third-party businesses, including Complainant’s competitors. Complainant argues that Respondent attempts to create a likelihood of confusion as to Complainant’s affiliation with the disputed domain name for Respondent’s own potential profit via the pay-per-click fees generated. The Panel accordingly holds that Respondent’s efforts to use Complainant’s mark for its own commercial gain by attracting and confusing consumers indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Assoc. Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent’s prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through fees.’”).
Complainant alleges that given the fame of the VICTORIA’S SECRET mark and Complainant’s trademark registrations, it is inconceivable that Respondent was unaware of Complainant’s mark when Respondent registered the disputed domain name. Complainant argues that, at a minimum, Respondent would have had constructive knowledge of the mark. The Panel disregards Complainant’s arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”) The Panel finds that Respondent had actual notice, however, which is evidence that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) (“That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant’s mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).”).
The Panel determines Complainant has proven Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasecretcatalog.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 12, 2012
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