national arbitration forum

 

DECISION

 

Victoria’s Secret Stores Brand Management, Inc. v. PrivacyProtect.org c/o Domain Admin

Claim Number: FA 1357512

 

PARTIES

Complainant is Victoria’s Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, LLP, Washington D.C., USA.  Respondent is PrivacyProtect.org c/o Domain Admin (“Respondent”), The Netherlands.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriasecret-tr.com>, registered with FBS Inc.

 

PANEL

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 10, 2010.  The Complainant was submitted in both Turkish and English.

 

On November 12, 2010, FBS Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriasecret-tr.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name.  FBS Inc. has verified that Respondent is bound by the FBS 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 November 16, 2010, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of December 6, 2010 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@victoriasecret-tr.com.  Also on November 16, 2010, the Turkish 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 December 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 the Respondent.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <victoriasecret-tr.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <victoriasecret-tr.com> domain name.

 

3.      Respondent registered and used the <victoriasecret-tr.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Victoria’s Secret Stores Brand Management, Inc., sells women’s lingerie and other apparel, personal care and beauty products, swimwear, outerwear, and gift cards.  Complainant owns multiple United States Patent and Trademark Office (“USPTO”) registrations for the VICTORIA’S SECRET marks:

 

Reg. No. 1,146,199     issued January 20, 1981;

Reg. No. 1,908,042     issued August 1, 1995; &

Reg. No. 3,480,533     issued August 5, 2008.

 

Respondent, PrivacyProtect.org c/o Domain Admin, registered the <victoriasecret-tr.com> domain name on January 8, 2010.  The disputed domain name resolves to a website displaying Complainant’s VICTORIA’S SECRET mark and Complainant’s copyrighted promotional photographs of women modeling Complainant’s clothing.  The disputed domain name commercially benefits Respondent by infecting visitors’ computers with malicious software that attempts to steal their private information.

 

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."

 

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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant owns multiple USPTO registrations for the VICTORIA’S SECRET marks:

 

Reg. No. 1,146,199     issued January 20, 1981;

Reg. No. 1,908,042     issued August 1, 1995; &

Reg. No. 3,480,533     issued August 5, 2008.

 

The Panel finds that Complainant’s USPTO trademark registrations serve as sufficient evidence to establish Complainant’s rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s residence or business operations in a different country.  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also 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).

 

Complainant alleges that Respondent’s <victoriasecret-tr.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name makes only minor changes to Complainant’s mark:  it deletes the space between the terms, the apostrophe, and the letter “s,” and it adds a hyphen, the letters “tr,” which are an abbreviation for Turkey and the Turkish country code top-level domain, and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that neither deleting a single letter from Complainant’s mark nor adding a geographical abbreviation distinguishes the disputed domain name from Complainant’s mark.  See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark).  The Panel also finds the neither deleting the space between terms nor the apostrophe has any effect on preventing 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 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).  The Panel also finds that adding a hyphen and a gTLD are insignificant changes that do not prevent confusing similarity.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).  Thus, the Panel finds that Respondent’s <victoriasecret-tr.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark according to Policy  ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires that Complainant first present a prima facie case before the burden to show rights and legitimate interests transfers to Respondent.  The Panel holds that Complainant has met this burden in the instant proceeding and that it is now the obligation of Respondent to prove its rights and legitimate interests in the disputed domain name.  As a result of its failure to respond, however, the Panel finds that Respondent has not satisfied its burden and has not shown rights and legitimate interests in the disputed domain name.  The Panel also finds that Complainant’s allegations may accordingly be accepted as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).  The Panel elects to consider all the evidence in the record, however, in light of the Policy ¶ 4(c) factors in order to make a determination on Respondent’s rights and legitimate interests. 

 

Complainant argues that Respondent is not affiliated with Complainant and is not licensed or permitted to use the VICTORIA’S SECRET mark.  The WHOIS information for the <victoriasecret-tr.com> domain name does not reflect any association between Respondent and the disputed domain name.  The Panel accordingly finds that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Complainant contends that the website resolving from the <victoriasecret-tr.com> domain name displays Complainant’s VICTORIA’S SECRET mark and copyrighted photographs of models wearing Complainant’s clothing.  Complainant also alleges that the resolving website maliciously attempts to infect visitors’ computers with software that is designed to steal users’ private information.  Complainant asserts that when attempting to visit the disputed domain name, some browsers display a warning page identifying the website as a potentially dangerous website that may try to install malicious software.  Google also has an advisory associated with the resolving website.  The Panel finds that using the <victoriasecret-tr.com> domain name to infect users’ computers with software that maliciously steals private data is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not 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 finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s <victoriasecret-tr.com> domain name intentionally includes Complainant’s well-known and famous mark in order to attract Internet users and create a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s website.  Because Respondent’s website allegedly attempts to download malicious software that steals visitors’ private data, Complainant asserts that Respondent uses this attraction and likelihood of confusion for its own profit. The Panel finds that these facts are evidence of bad faith according to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).

 

Complainant alleges that the primary purpose of Respondent’s <victoriasecret-tr.com> domain name and resolving website is to attract Internet users and then download a malicious software onto their computers for stealing their private information.  The Panel finds this fraudulent and malicious of the disputed domain name indicates bad faith registration and use according to Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <victoriasecret-tr.com> domain name be TRANSFERRED from Respondent to Complainant .

 

 

 

Louis E. Condon, Panelist

Dated:  December 17, 2010

 

 

 

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