Victoria's Secret Stores Brand Management, Inc. v. Whois-Privacy.Net Ltd / Dn Manager
Claim Number: FA1206001449325
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complain-ant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington D.C., USA. Respondent is Whois-Privacy.Net Ltd / Dn Manager (“Respondent”), Vanuatu.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasecretstore.com>, registered with BigRock Solutions Pvt Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 19, 2012; the National Arbitration Forum received payment on June 19, 2012.
On June 20, 2012, BigRock Solutions Pvt Ltd confirmed by e-mail to the National Arbitration Forum that the <victoriasecretstore.com> domain name is registered with BigRock Solutions Pvt Ltd and that Respondent is the current registrant of the name. BigRock Solutions Pvt Ltd has verified that Respondent is bound by the BigRock Solutions Pvt 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@victoriasecretstore.com. Also on June 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 July 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant, its licensees, and predecessors, have, since at least 1977, em-ployed the VICTORIA’S SECRET trademark in connection with the marketing of women’s lingerie and other apparel, personal care and beauty products, swim-wear, outerwear and gift cards.
Complainant has registered the VICTORIA’S SECRET trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,146,199, registered January 20, 1981);
Respondent registered the disputed domain name on November 29, 2006.
Respondent’s <victoriasecretstore.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark;
The website resolving from the disputed domain name offers links to the web-sites of various enterprises, most unrelated to the business of Complainant, but including some offering products in competition with Complainant’s business;
Respondent generates revenue by collecting a click-through fee when Internet users utilize the links offered on its resolving website.
Respondent is not affiliated with Complainant, nor has Respondent been licensed or otherwise permitted to use Complainant’s mark in any way;
Respondent has not been commonly known by the disputed domain name;
Respondent is not making a bona fide offering of goods or services or a legit-imate noncommercial or fair use of the disputed domain name;
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and uses the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website;
Respondent was aware of Complainant’s famous VICTORIA’S SECRET mark when it registered the disputed domain name;
Respondent both registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 alle-gations of the Complaint.”
Complainant has rights in the VICTORIA’S SECRET trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has estab-lished rights in the VICTORIA’S SECRET mark through registrations [with the USPTO] under Policy ¶ 4(a)(i).”).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction other than that in which Respondent resides or operates a business. See, for example, Koninklijke KPN N.V. v. Tele-pathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a complainant can demonstrate rights in a mark from regis-tration in some jurisdiction).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that Respondent’s <victoriasecretstore.com> do-main name is confusingly similar to Complainant’s VICTORIA’S SECRET trade-mark. The disputed domain name has been formed merely by removing the apostrophe, the space between terms and an “s” from Complainant’s mark, while adding the generic term “store” and the generic top-level domain (“gTLD”) “.com”. These alterations of the mark in creating the domain name fail to differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). See 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 the terms of the mark of an-other and the addition of a gTLD do not establish distinctiveness from a com-plainant’s mark under Policy ¶ 4(a)(i)); see also 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 distinguish the do-main name thus created from the mark from which it was derived); further see Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that the addition of generic terms to a complainant’s HARRY POTTER mark in a respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names under the standards of the Policy).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the disputed domain name, that Respondent is not affiliated with Complainant, nor is Respondent licensed or authorized to use Complainant’s mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Whois-Privacy.Net Ltd / Dn Manager,” which does not resemble the contested domain name. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (con-cluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate interests in the domains under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domains, and where a complainant had not authorized that respondent to regis-ter any domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is making neither a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Re-spondent’s domain name resolves to a website offering links to the websites of third parties, some of which compete with Complainant’s own product offerings, and that Respondent generates revenue by collecting a click-through fee when Internet users utilize the offered links. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007):
Respondent is using the … domain name to display a list of hyper-links, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
It is Plain from the record that Respondent registered and uses the disputed domain name to attract Internet users to its website for its commercial gain by creating a likelihood of confusion among users as to the possibility of sponsor-ship, affiliation, or endorsement of Respondent’s website by Complainant. This is evidence that Respondent registered and uses the disputed domain name in bad faith within the contemplation of Policy ¶ 4(b)(iv). See, for example, Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a web-site which features links to competing and non-competing commer-cial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The record also amply demonstrates that Respondent was aware of Complainant and its rights in its VICTORIA’S SECRET trademark when Respondent register-ed the disputed domain name. This too is evidence that Respondent registered and uses the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <victoriasecretstore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 1, 2012
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