Victoria's Secret Stores Brand Management, Inc. v. JW van Kempen
Claim Number: FA1203001432909
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 JW van Kempen (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretholland.com>, registered with Key-Systems GMBH.
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 March 5, 2012; the National Arbitration Forum received payment on March 5, 2012. The Complaint was submitted in both Dutch and English.
On March 6, 2012, Key-Systems GMBH confirmed by e-mail to the National Arbitration Forum that the <victoriassecretholland.com> domain name is registered with Key-Systems GMBH and that Respondent is the current registrant of the name. Key-Systems GMBH has verified that Respondent is bound by the Key-Systems GMBH 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 8, 2012, the Forum served the Dutch language Complaint and all Annexes, including a Dutch language Written Notice of the Complaint, setting a deadline of March 28, 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@victoriassecretholland.com. Also on March 8, 2012, the Dutch 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 formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 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.
Although the registration agreement is written in Dutch, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Dutch 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
1. Complainant, Victoria’s Secret Stores Brand Management, Inc., has used the VICTORIA’S SECRET mark and variations thereof since 1977 in connection with the sale of women’s lingerie, swimwear, and other apparel, personal care and beauty products, as well as in fashion shows broadcasted worldwide.
2. Complainant owns the VICTORIA’S SECRET mark through its many registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981).
3. Respondent, JW Van Kempen, registered the <victoriassecretholland.com> domain name on December 26, 2010.
4. Respondent’s domain name resolves to a parked page with the webhost TransIP that advertises an unrelated business offering a variety of web hosting and domain name services.
5. Respondent receives referral fees when website visitors use the services advertised on the resolving website.
6. Respondent is not associated with Complainant and has no permission to use the VICTORIA’S SECRET mark in any way.
7. Respondent has actual and constructive notice of Complainant’s rights in the VICTORIA’S SECRET mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Victoria’s Secret Stores Brand Management, Inc., has used the VICTORIA’S SECRET mark since 1977 in connection with the sale of women’s lingerie, swimwear, and other apparel, personal care and beauty products, and in fashion shows broadcasted worldwide. Complainant owns the VICTORIA’S SECRET mark through its many registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, JW Van Kempen, registered the <victoriassecretholland.com> domain name on December 26, 2010. Respondent’s domain name resolves to a parked page with the webhost TransIP that advertises an unrelated business offering a variety of web hosting and domain name services.
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 rights in the VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i) through its multiple registrations with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (complainant had established rights in its mark when it submits evidence of its registration with the USPTO). Further, Complainant is not required to register its mark in the country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). 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).
The Panel finds that the <victoriassecretholland.com> domain name is confusingly similar to its VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i) because the domain name uses the entire mark except for the space between terms and the apostrophe and adds only the geographic term “holland” and the generic top-level domain (“gTLD”) “.com.” See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004)( “a domain name consisting of a well-known mark, combined with a geographically descriptive term. . . is confusingly similar to the mark”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)(a gTLD is necessary in every domain name, thus adding a gTLD is irrelevant when establishing the confusing similarity of a domain name); see also 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).”).
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) (concluding 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).
Respondent does not have permission to use the VICTORIA’S SECRET mark and is not commonly known by the <victoriassecretholland.com> domain name. The WHOIS information identifying the domain registrant as “JW van Kempen” shows that Respondent is not commonly known by the disputed domain name. Based on the fame and reputation associated with Complainant’s mark, and the WHOIS information, the Panel finds that Respondent is not commonly known by the <victoriassecretholland.com> domain name and can claim no legitimate rights or interests in the name under Policy ¶ 4(c)(ii). See Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003), andVictoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001).
Respondent is not making an active use of the disputed domain name other than to host a generic parked page containing advertisements for domain hosting services, from which Respondent derives revenue. The Panel finds that Respondent’s use of the domain name to display advertisements unrelated to Complainant’s business shows that the domain name is not being used in connection with 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 Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Respondent registered and is using the disputed domain name in bad faith because the domain name resolves to a website that advertises a business unrelated to Complainant offering domain- and web-hosting services, which generates profit for Respondent. Respondent registered the disputed domain name with the intent to attract Internet users and create a likelihood of confusion with Complainant’s mark as to the source, sponsorship or affiliation of the domain name. Respondent uses the disputed domain name in this manner for commercial gain. The Panel finds that Respondent registered and uses the <victoriassecretholland.com> domain name in bad faith under Policy ¶ 4(b)(iv) by linking the domain name to a website advertising an unrelated business for its own profit. See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
As Respondent had actual knowledge of Complainant's rights in the mark before it registered the disputed domain name, the Panel finds bad faith registration 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 <victoriassecretholland.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 23, 2012
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