Victoria's Secret Stores Brand Management, Inc. v. qin shuang / linlan / lan lin / xiayun / yun xia / weng hong / cao ying / zhang ling / cheguan / guan che / ling feng / zhounnichang / bichang zhou / panxia / xia pan
Claim Number: FA1205001442748
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, California, USA. Respondent is qin shuang / linlan / lan lin / xiayun / yun xia / weng hong / cao ying / zhang ling / cheguan / guan che / ling feng / zhounnichang / bichang zhou / panxia / xia pan ( collectively “Respondent”), China.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <atraentevictoriasecret.com>, <bellevictoriasecret.com>, <enjoyvictorias.com>, <modevictoriasecret.com>, and <temptingvictoria.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd and <atractivovictoria.com>, <hotvictoriasecret.com>, <seksikasvictoria.com>, <sexyvictoriasale.com>, and <sexyvictoriashop.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2012; the National Arbitration Forum received payment on May 7, 2012. The Complaint was submitted in both Chinese and English.
On May 13, 2012 and May 21, 2012, Jiangsu Bangning Science & Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <atraentevictoriasecret.com>, <bellevictoriasecret.com>, <enjoyvictorias.com>, <modevictoriasecret.com>, and <temptingvictoria.com> domain names are registered with Jiangsu Bangning Science & Technology Co. Ltd and that Respondent is the current registrant of the names. Jiangsu Bangning Science & Technology Co. Ltd has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. 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 May 9, 2012 and May 15, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <atractivovictoria.com>, <hotvictoriasecret.com>, <seksikasvictoria.com>, <sexyvictoriasale.com>, and <sexyvictoriashop.com> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. 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 May 21, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 11, 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@atractivovictoria.com, postmaster@atraentevictoriasecret.com, postmaster@bellevictoriasecret.com, postmaster@enjoyvictorias.com, postmaster@hotvictoriasecret.com, postmaster@seksikasvictoria.com, postmaster@sexyvictoriasale.com, postmaster@modevictoriasecret.com, postmaster@sexyvictoriashop.com, and postmaster@temptingvictoria.com. Also on May 21, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the 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. Accordingly, Panel has issued 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.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Pursuant to Rule 11(a), Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and in the absence of a Response, determines that the remainder of the proceedings be conducted in English.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark VICTORIA’S SECRET since June 12, 1977 in connection with its lingerie, beauty products, swimwear and clothing business.
2. Complainant owns United States Federal Trademark Regn. No. 1,146,199 for VICTORIA’S SECRET, registered January 20, 1981.
3. The disputed domain names were registered no earlier than November 11, 2011.
4. The disputed domain names resolve to websites that promote the sale of allegedly counterfeit copies of Complainant’s goods.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has alleged that the domain name registrants are aliases for a single person and/or entity. In particular, Complainant contends that the websites resolving from the disputed domain names share overwhelming similarities. Except for the <hotvictoriasecret.com> domain name, they share homepages with identical layouts. Complainant argues that the website resolving from the <hotvictoriasecret.com> domain name features a similar look and feel to the other websites and uses an identical menu bar. Complainant points to the fact that the disputed domain names were registered between November 11, 2011 and December 26, 2011 with one of two Registrars.
Panel regards this evidence of an allegedly common actual owner of the domain names as being far from overwhelming, however in the absence of any counterargument is prepared to treat the listed entities as jointly controlled by a single but unknown third party and is accordingly willing to allow the Complaint to be brought against the several holders treating them collectively as Respondent.
Primary Issues
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 (seeVertical 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.”)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
For the purposes of comparison of the disputed domain names with Complainant’s trademark it is accepted that the gTLD, “.com” can be disregarded (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The question resolves to whether the following terms are confusingly similarity with the trademark VICTORIA’S SECRET:
atractivovictoria
atraentevictoriasecret
bellevictoriasecret
enjoyvictorias
hotvictoriasecret
seksikasvictoria
sexyvictoriasale
modevictoriasecret
sexyvictoriashop
temptingvictoria
There word VICTORIA is a known female first name and has only modest capacity to distinguish goods in the nature of beauty products, clothing, swimwear and lingerie. On the other hand, the composite trademark VICTORIA’S SECRET has ample capacity to distinguish. Put another way, it is the combination of the words VICTORIA and SECRET that is distinctive.
Panel does not find the following terms to be confusingly similar to the trademark VICTORIA’S SECRET:
atractivovictoria
enjoyvictorias
seksikasvictoria
sexyvictoriasale
sexyvictoriashop
temptingvictoria
Panel finds the following terms to be confusingly similar to Complainant’s trademark because they either add purely descriptive matter such as “belle”, “hot” or “mode” to the trademark or else the letter string “atraente” which, albeit perhaps meaningless, nonetheless leaves Complainant’s trademark readily identifiable as the characteristic and memorable part of the whole:
atraentevictoriasecret
bellevictoriasecret
hotvictoriasecret
modevictoriasecret
Panel relies on prior decisions in 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)). In addition, the removal of a space, a letter, and an apostrophe does not necessarily remove the disputed domain names from the realm of confusing similarity (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 also 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).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to the domain names <atraentevictoriasecret.com>, <bellevictoriasecret.com>, <hotvictoriasecret.com>, and <modevictoriasecret.com> but has not satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to the domain names <atractivovictoria.com>, <sexyvictoriashop.com>, <enjoyvictorias.com>, <seksikasvictoria.com>, <sexyvictoriasale.com>, and <temptingvictoria.com>.
Accordingly, the Complainant fails as against those last six last mentioned domain names. The remainder of the reasoning for Panel’s decision only relates to the domain names names <atraentevictoriasecret.com>, <bellevictoriasecret.com>, <hotvictoriasecret.com>, and <modevictoriasecret.com>.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information does not identify Respondent by any name which might give rise to evidence that Respondent could be commonly known by any of the (remaining) disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. Complainant provides evidence that the domain names resolve to websites selling goods in the nature of those exact same goods sold by Complainant. Complainant asserts that those goods are counterfeit. By use of the term, counterfeit, Panel assumes that it is Complainant’s allegation that the goods for sale from those websites somehow breach Complainant’s intellectual property rights. Panel need not made any assessment of that allegation since for the purposes of the Policy it is enough that Complainant asserts that the goods are not its own. Panel finds that Respondent’s use does not demonstrate a bona fide offering of goods or a legitimate noncommercial or fair use ( in any case, 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).”)).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall under at least paragraph 4(b)(iii) of the Policy. Respondent is offering for sale goods identical to those goods sold by Complainant. For that reason it is a competitor of Complainant. Panel can infer in the absence of any contrary evidence that Respondent’s “primary” motivation was to upset Complainant’s business (see Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in relation to the following domain names: <atraentevictoriasecret.com>, <bellevictoriasecret.com>, <hotvictoriasecret.com>, and <modevictoriasecret.com> and accordingly, it is ordered that those disputed domain names be TRANSFERRED to Complainant.
Having failed to establish at least one of the three elements required under the ICANN Policy in relation to the following domain names: <atractivovictoria.com>, <enjoyvictorias.com>, <seksikasvictoria.com>, <sexyvictoriasale.com>, <sexyvictoriashop.com>, and <temptingvictoria.com> , the Panel concludes that relief shall be DENIED in relation to those disputed domain names.
Debrett G. Lyons, Panelist
Dated: June 20, 2012
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