national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. PPA Media Services / Ryan G Foo

Claim Number: FA1306001505712

 

PARTIES

Complainant is Victoria’s Secret Stores Brand Management, Inc. (“Complain-ant”), represented by Holly Pranger of Pranger Law Group, California, USA.  Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriessecret.com> registered with INTERNET.BS CORP.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.

 

On June 24, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <victoriessecret.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name.  INTERNET.BS CORP. has verified that Respondent is bound by the registration agreement of INTERNET.BS CORP. 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 28, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2013 by which Re-spondent 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@victoriessecret.com.  Also on June 28, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 July 23, 2013, 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 Not-ices, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant holds registrations for the VICTORIA’S SECRET trademark, on file with the United States Patent and Trademark Office ("USPTO"), (including Reg. No. 1,146,199, registered January 20, 1981).

 

Complainant has used the VICTORIA’S SECRET mark continuously since 1977 in connection with the sale of lingerie, beauty products, swimwear, clothing and other goods.

 

Complainant has over 1,000 retail stores throughout the United States, and uses the website at <victoriassecret.com>, which it registered on January 23, 1995.

 

Complainant’s extensive marketing and advertising by means of the VICTORIA’S SECRET mark have made it the largest lingerie retailer in the United States, as well as generating for it substantial commercial value and inestimable goodwill.

 

Respondent registered the disputed domain name on June 23, 2000.

 

The <victoriessecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

Respondent has not been commonly known by the disputed domain name.

 

Complainant has not licensed or otherwise authorized Respondent’s use of the VICTORIA’S SECRET mark.

 

Respondent is not using the disputed domain in connection with any bona fide offering of goods or services, nor is it making any legitimate noncommercial or fair use of the disputed domain name.

 

Respondent uses the domain name to display links to websites offering Internet users gifts cards in exchange for survey participation and providing personal information.

 

Respondent likely receives compensation derived from the visits of Internet users to those third-party websites.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

 

Respondent is using the domain name for its commercial benefit by creating a likelihood of confusion among Internet users as to the possibility of Complain-ant’s association with the disputed domain name.

 

Respondent knew of Complainant and its rights in the VICTORIA’S SECRET mark at the time Respondent registered the contested domain name.

 

Respondent registered and uses the domain name in bad faith.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

FINDINGS

(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.

 

DISCUSSION

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 can-celled 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 Verti-cal 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 reason-able 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 allegations of the Complaint.”

 

Identical and/or Confusingly Similar

 

Complainant has rights in the VICTORIA’S SECRET trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):

 

Complainant has established rights in the … mark through registration of the mark with the USPTO.

 

This is true without regard to whether Complainant’s rights in its trademark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Chile).  See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (finding that it does not matter for purposes of Policy ¶ 4(a)(i) whether a UDRP complainant’s mark is registered in a country other than that of a respondent’s place of business). 

 

Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <victoriessecret.com> domain name is confus-ingly similar to Complainant’s VICTORIA’S SECRET mark.  The domain name contains the entire mark, the only variance being the replacement of the “a” in VICTORIA’S with the letter “e” and the absence of the apostrophe and the space between the terms of the mark, and the inclusion of the generic top-level domain name (“gTLD) “.com.”  These alterations of the mark, made in creating the do-main name, are insufficient to distinguish the domain name from the mark under the standards of the Policy.  See, for example, Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):

 

The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of con-fusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

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.

 

Further see Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to the mark of another in forming a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

Rights or Legitimate Interests

 

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 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 re-spondent 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 out a sufficient prima facie showing under this head of the Policy.  Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).  Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.

 

We begin by noting that Complainant asserts, and Respondent does not deny,

that Respondent has not been commonly known by the <victoriessecret.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent’s use of the VICTORIA’S SECRET trademark.  Moreover, the per-tinent WHOIS record identifies the registrant of the disputed domain name only as “PPA Media Services / Ryan G Foo,” which does not resemble the domain name.  On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legit-imate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had failed to show that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant asserted that it had not auth-orized that respondent to register a domain name containing its mark).

 

We next observe that Complainant asserts that Respondent is not using the dis-puted domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of it, in that Respondent uses the domain name to display links to websites offering gifts cards in exchange for survey participation and providing personal information, and that Respondent likely receives income tracing to the visits of internet users to those websites.  This employment of the domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a UDRP complainant’s mark, websites from the operation of which that respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy);  see also Victoria’s Secret Stores Brand Mgmt., Inc. v. egyGossip.com, FA 1288062 (Nat. Arb. Forum Nov. 20, 2009) (finding that a respondent lacked rights and legitimate interests in a contested domain name where that domain name was used to solicit the completion of a survey by Internet users). 

 

 

The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

We are persuaded by the evidence that Respondent uses the domain name <victoriessecret.com>, which is confusingly similar to Complainant’s VICTORIA’S SECRET trademark, to create a likelihood of confusion among Internet users as to the possibility of Complainant’s association with that domain name, and that Respondent does so for commercial gain.  This is proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv).  See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (finding that, where a dis-puted domain name offered incentives to Internet users for the completion of surveys, “Internet users are likely to believe that such activities are sponsored by or affiliated with Complainant and is evidence of Respondent’s bad faith regis-tration and use pursuant to Policy ¶ 4(b)(iv)”);  see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where a respondent linked a disputed domain name to another domain name, <iwin.com>, presum-ably receiving a portion of the advertising revenue derived from the resolving site by directing Internet traffic there, thus using that domain name to attract Internet users for commercial gain).

 

We are also convinced by the evidence that Respondent knew of Complainant and its rights in the VICTORIA’S SECRET trademark when Respondent regis-tered the contested <victoriessecret.com>domain name.  This stands as proof of bad faith registration of the domain name.  See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that a respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

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 <victoriessecret.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  July 30, 2013

 

 

 

 

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