Victoria's Secret Stores Brand Management, Inc. v. Kim Robinson
Claim Number: FA1201001427046
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee of Sequel Technology & IP Law, PLLC, Washington, D.C., USA. Respondent is Kim Robinson (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriassecretcouponcode.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2012; the National Arbitration Forum received payment on January 30, 2012.
On January 30, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <victoriassecretcouponcode.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 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@victoriassecretcouponcode.net. Also on January 30, 2012, the 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 February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretcouponcode.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <victoriassecretcouponcode.net> domain name.
3. Respondent registered and used the <victoriassecretcouponcode.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Victoria's Secret Stores Brand Management, Inc., operates retail and online stores selling its branded lingerie and other apparel, personal and beauty care products, swimwear, outerwear, and gift cards. Complainant sold more than $5.5 billion of merchandise in 2010 alone under its VICTORIA’S SECRET mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (e.g., Reg. No. 1,146,199 registered January 20, 1981).
Respondent, Kim Robinson, registered the <victoriassecretcouponcode.net> domain name on May 20, 2011. Respondent’s domain name resolves to a website that features commentary about Complainant’s company as well as several pay-per-click links to competing and unrelated business entities.
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.
Complainant asserts that it has established Policy ¶ 4(a)(i) rights in its VICTORIA’S SECRET mark through its various trademark registrations of its mark with the USPTO (e.g., Reg. No. 1,146,199 registered January 20, 1981). Prior panels have concluded that a trademark registration with the USPTO is sufficient evidence of Policy ¶ 4(a)(i) rights in a mark, regardless of the location of Respondent. See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel agrees with prior precedent and holds that Complainant has established rights in the VICTORIA’S SECRET mark under Policy ¶ 4(a)(i).
Further, Complainant argues that the <victoriassecretcouponcode.net> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Complainant first notes that the domain name removes the space between the terms and the apostrophe from its mark. Second, Complainant notes that the domain name adds the generic terms “coupon” and “code” as well as the generic top-level domain (“gTLD”) “.net.” Previous panels have determined that such omissions and additions are not sufficient to render a disputed domain name distinct from the mark of a complainant. 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 terms and the addition of a gTLD do not establish distinctiveness from the complainant’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 significantly distinguish the domain name from the mark); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not own any rights and legitimate interests in the <victoriassecretcouponcode.net> domain name. Complainant is required to make a prima facie case in support of these allegations pursuant to Policy ¶ 4(a)(ii). Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel finds that Complainant has produced a prima facie case through its various submissions. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <victoriassecretcouponcode.net> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complaint argues that Respondent is not commonly known by the <victoriassecretcouponcode.net> domain name and that Complainant has not given Respondent permission to use Complainant’s mark. The WHOIS information identifies “Kim Robinson” as the registrant of the <victoriassecretcouponcode.net> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. Previous panels have found that, where there is no evidence on record indicating a respondent’s direct connection with the domain name at issue, such a respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that, without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the disputed domain name in connection with Google’s AdSense program through a display of commercial advertisements and third-party links to unrelated and competing businesses. Complainant’s screen shot shows that Respondent has provided commentary regarding Complainant’s founding, as well as links to “Frederick’s of Hollywood,” “Chegg Coupon,” and other third-party links. The Panel finds that such use of the domain name does not amount to 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name 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)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel notes that Complainant does not present any arguments of bad faith disruption under Policy ¶ 4(b)(iii). As such the Panel chooses not to address such an argument under Policy ¶ 4(a)(iii).
However, Complainant does argue that Respondent registered and is using the disputed domain name for commercial gain by creating confusion as to Complainant’s affiliation or sponsorship of the domain name. Complainant has presented evidence that Respondent’s resolving website includes information about Complainant’s business and founding as well as various third-party links to competing and unrelated businesses. The Panel notes that the overall feel of Respondent’s website appears to come from Complainant or an authorized agent of Complainant. The Panel finds that Respondent has set up its website in the hopes that Internet users will happen up it and think they are receiving informative information and links to use in Complainant’s stores. Under Policy ¶ 4(b)(iv), creating confusion with a complainant’s mark for commercial gain has been found to be evidence of bad faith registration and use of the domain name at hand. The Panel finds such bad faith in the current proceeding. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Lastly, Complainant asserts that, “[i]t is clear from the content of the [disputed domain name] that Respondent was aware of Complainant’s famous trademark VICTORIA’S SECRET when Respondent registered the Domain Name.” Complainant goes on to argue that, given the fame and notoriety of its mark, it is conceivable that Respondent had at least constructive knowledge of Complainant and its rights in the mark. The Panel notes however that UDRP precedent has not been receptive of constructive knowledge claims under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, in this instance the Panel finds that Respondent had actual knowledge of Complainant and its rights in the VICTORIA’S SECRET mark. Such knowledge can be inferred from the information given on the resolving web page as well as the headings and links contained thereon. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii) through its prior knowledge of Complainant and its rights in the mark. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecretcouponcode.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 8. 2012
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