Victoria’s Secret Stores Brand Management, Inc. v. AJ LaFond
Claim Number: FA1012001362225
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 AJ LaFond (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriassecretxxx.com> and <victoriassecrettoys.com>, registered with GoDaddy.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2010; the National Arbitration Forum received payment on December 8, 2010.
On December 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretxxx.com> and <victoriassecrettoys.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 December 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 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@victoriassecretxxx.com, postmaster@victoriassecrettoys.com. Also on December 9, 2010, the 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.
A Response was received on December 30, 2010. It was determined to be deficient and not in compliance with ICANN Rule #5(a) as it was received after the deadline to file a response. The Panel has nonetheless decided to consider the deficient Response.
On January 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the registrant of the trademark and service mark VICTORIA’S SECRET and numerous variations thereof. Complainant has used the marks in commerce since at least as early as 1977 in connection with the sale of women’s lingerie and other products.
Respondent registered the disputed domain names in 2010 and is using them to direct users to a website entitled “Sexworld,” which displays sexually explicit images and offers adult-oriented merchandise for sale. Complainant alleges that the disputed domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark, on the grounds that they incorporate the mark and add “xxx” or “toys” thereto. Complainant states that it has not licensed or permitted Respondent to use its mark in any manner. Complainant accuses Respondent of using the domain names to confuse consumers and divert them from Complainant’s website for commercial gain and argues that this use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to the Policy. Complainant contends that Respondent lacks rights or legitimate interests in the domain names and that Respondent registered and is using the domain names in bad faith.
B. Respondent
The Response states as follows (in its entirety):
I am going to make my response short but to the point. Please note the Complainants exhibit C includes numerous Trademarks and classes ( description of goods and or services) . The reason Victoria’s Secret has to file so many dozens of separate trademarks is because they cannot legally Trademark the name ‘Victorias’ or the name ‘Secret’. However they can and have trademarked the names together as Victoria’s Secret. BUT every time they want to add something to their name – they have to by law, apply for another trademark. Like for example Victoria’s Secret Pink, or Victoria’s secret Home, etc… This is because they don’t have the sole rights until they get an individual trademark for each name. Otherwise they could just use Victoria’s Secret and add whatever they want after. By law they cannot. Just as by Law they cannot claim to have rights to VictoriasSecretxxx.com . My Girlfriend Victoria is upset. We will be filing legal civil action. Sincerely AJ LaFond
The Panel finds that the disputed domain names <victoriassecretxxx.com> and <victoriassecrettoys.com> are confusingly similar to marks in which Complainant has rights, that Respondent lacks rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used 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:
(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.
The disputed domain names consist of Complainant’s famous mark, with “xxx” or “toys” appended thereto. The addition of extra letters or a generic term to a trademark does not prevent the resulting domain name from being confusingly similar to the mark, especially where the added term itself relates to the goods or services with which the mark is associated. See, e.g., Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001). The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s mark.
Complainant’s allegations and supporting evidence suffice to make out a prima facie case that Respondent lacks rights or legitimate interests in respect of the disputed domain names. The burden of production therefore shifts to Respondent to come forward with concrete evidence of his rights or legitimate interests. See, e.g., Shahrad Yazdani v. Domain Deluxe, FA1219173 (Nat. Arb. Forum Oct. 2, 2008). In the absence of such evidence, the Panel finds that Complainant has met its burden of proof on this issue.
Complainant’s contentions and evidence relating to registration and use in bad faith are similarly sufficient and unchallenged within this proceeding. Although Respondent claims that his girlfriend is named Victoria, he presents no evidence to substantiate this claim, and more importantly there is no indication that his reasons for registering and using the disputed domain names relate to his girlfriend’s name. To the contrary, based upon the evidence before the Panel, it appears quite likely that Respondent’s actions are targeted squarely at Complainant and its mark. The Panel therefore finds that the disputed domain names were registered and are being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretxxx.com> and <victoriassecrettoys.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 7, 2011
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