Victoria's Secret Stores Brand Management, Inc. v. bian ce / ce bian
Claim Number: FA1202001431524
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 bian ce / ce bian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sexyvictoriasecret.com>, registered with Bizcn.com, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2012; the National Arbitration Forum received payment on February 27, 2012. The Complaint was submitted in both English and Chinese.
On February 27, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sexyvictoriasecret.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 March 2, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 22, 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@sexyvictoriasecret.com. Also on March 2, 2012, the Chinese language 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 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
a) Complainant has rights in the VICTORIA’S SECRET mark which it uses in connection with the retail sale of women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards;
b) Complainant has registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981);
c) Respondent registered the <sexyvictoriasecret.com> domain name on November 1, 2011;
d) Respondent is not commonly known by the <sexyvictoriasecret.com> domain name;
e) The <sexyvictoriasecret.com> domain name previously resolved to a website which sold Complainant’s products;
f) The <sexyvictoriasecret.com> domain name is currently inactive;
g) Respondent’s registration and use of the <sexyvictoriasecret.com> domain name is disruptive to Complainant’s business;
h) Respondent registered and is using the disputed domain name in order to take commercial advantage of Internet users’ mistakes caused by confusion regarding the source, sponsorship, or affiliation of the disputed domain name;
i) Respondent had constructive and/or actual knowledge of Complainant’s rights in the VICTORIA’S SECRET mark prior to its registration and use of the <sexyvictoriasecret.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds a registered trademark for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.
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. Complainant alleges that it has registrations for the VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981). Registration of a mark with a trademark authority is evidence of rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). These rights satisfy Policy ¶ 4(a)(i) even where the respondent resides and/or operates from a country other than where the mark is registered. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <sexyvictoriasecret.com> domain name is confusingly similar to its VICTORIA’S SECRET mark. Respondent’s addition of the generic term “sexy” fails to differentiate the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark).
The Panel also finds that Respondent’s deletion of the apostrophe and spaces in Complainant’s mark fails to distinguish the <sexyvictoriasecret.com> domain name from the mark. See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also 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.”).
Additionally, the Panel finds that Respondent’s deletion of the letter “s” in Complainant’s mark does not differentiate the <sexyvictoriasecret.com> domain name from the VICTORIA’S SECRET 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 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”).
Finally, the Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) is irrelevant for the purposes of determining confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Therefore, the Panel find that Respondent’s <sexyvictoriasecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <sexyvictoriasecret.com> domain name. Complainant asserts that Respondent is not known by the <sexyvictoriasecret.com> domain name as a business, individual, or organization name and is not authorized to use the VICTORIA’S SECRET mark. Additionally, the <sexyvictoriasecret.com> domain name’s WHOIS record lists “bian ce / ce bian” as the domain name registrant. These uncontradicted contentions of the complainant and the WHOIS record are often determinative of whether a respondent is commonly known by a disputed domain name. 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 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). Therefore, the Panel finds that Respondent is not commonly known by the <sexyvictoriasecret.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s previous use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <sexyvictoriasecret.com> domain name, Complainant alleges, previously resolved to a website which made unauthorized sales of Complainant’s products. Selling a complainant’s products on a disputed domain name is not a use which is protected by Policy ¶¶ 4(c)(i) and 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant). Therefore, the Panel finds that Respondent’s previous use of the <sexyvictoriasecret.com> domain name 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.
Complainant further contends that Respondent’s current non-use of the <sexyvictoriasecret.com> domain name does not provide Respondent with rights or legitimate interests in the disputed domain name. Complainant has shown that Respondent’s <sexyvictoriasecret.com> domain name currently has no content. Respondent’s inactive holding of the disputed domain name 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. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and prior use of the <sexyvictoriasecret.com> domain name was disruptive and competitive. Complainant contends that the disputed domain name previously resolved to a website which offered Complainant’s goods for sale. The panels in Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), found that the sale of the complainant’s goods on a disputed domain name competed with the complainant’s business and was disruptive. Therefore, the Panel finds that Respondent registration and prior use of the <sexyvictoriasecret.com> domain name was disruptive to Complainant’s business conducted under the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(b)(iii).
Complainant claims that Respondent intentionally created confusion as to whether Complainant was associated with the <sexyvictoriasecret.com> domain name in order to profit from Internet users’ mistakes in that regard. Complainant asserts that Respondent previously used Complainant’s mark on its confusingly similar website to cause Internet users to believe that the <sexyvictoriasecret.com> domain name was controlled by Complainant so that Internet users would make purchases on the disputed domain name which commercially benefited Respondent. The Panel finds that Respondent derived monetary benefit from the prior commercial use of the disputed domain name. The Panel finds that Respondent registered and was using the <sexyvictoriasecret.com> domain name in bad faith as Respondent meant to create confusion as to the source of the disputed domain name and then presumably took commercial advantage of the mistakes Internet users made as a result of this confusion within the meaning of 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
Complainant argues that Respondent’s registration and current use of the disputed domain name are further evidence of bad faith. Complainant contends that the <sexyvictoriasecret.com> domain name currently resolves to an inactive website. Holding an inactive disputed domain name demonstrates bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and is currently using the <sexyvictoriasecret.com> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <sexyvictoriasecret.com> domain name without actual knowledge of Complainant's rights in the mark. The Panel agrees with Complainant that Respondent undoubtedly had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds 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).
The Panel finds Complainant has satisfied 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 <sexyvictoriasecret.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 12, 2012
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