national arbitration forum

 

DECISION

 

Victoria's Secret Stores Brand Management, Inc. v. Tori Thompson

Claim Number: FA1203001434610

 

PARTIES

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 Tori Thompson (“Respondent”), Wayne, Michigan, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecretwholesale.com> (the “Disputed Domain Name”), registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he 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.

 

Douglas M. Isenberg as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2012, naming as the respondent an entity identified as “Contact Privacy Inc. Customer 0125532771”.  The National Arbitration Forum received payment on March 15, 2012.

 

On March 15, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretwholesale.com> domain name is registered with Tucows, Inc. and that Tori Thompson is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, 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”).  Accordingly, on March 15, 2012, the Forum sent a deficiency letter to Complainant regarding the identity of the respondent.  Complainant timely submitted an amended complaint identifying Tori Thompson as the respondent.

 

On March 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@victoriassecretwholesale.com.  Also on March 16, 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.

 

A timely Response was received and determined to be complete on April 5, 2012.

 

On April 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant contends, in relevant part, that:

 

1.    The Disputed Domain Name is confusingly similar to the trademark VICTORIA’S SECRET – which has been used by Complainant or its predecessors since at least as early as June 12, 1977, in connection with the sale of, inter alia, women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear, and is protected by 32 registrations at the U.S. Patent and Trademark Office, including U.S. Reg. No. 1,146,199 – because the Disputed Domain Name “incorporates Complainant’s VICTORIA’S SECRET mark in its entirety (absent the apostrophe and space, which cannot be included in a domain name), and merely appends the generic term ‘wholesale’ to the mark. By registering a domain name that merely adds a generic term to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves.”

 

2.    Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, the Disputed Domain Name previously “redirected to worldssexiestwholesale.com… offering for sale goods that compete with Complainant’s merchandise”; Respondent is not affiliated with or licensed by Complainant; “Respondent was using the Domain Name to confuse consumers and divert them from the legitimate VICTORIA’S SECRET web site to the [worldssexiestwholesale.com] Site” for commercial purposes; and Respondent is not commonly known by the Disputed Domain Name.

 

3.    The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent was previously using Complainant’s VICTORIA’S SECRET mark in the [Disputed] Domain Name to drive traffic to the Site [at <worldssexiestwholesale.com>], which was not owned or authorized by Complainant and that offers for sale goods that compete with Complainant’s merchandise.”

 

B. Respondent

 

Respondent contends, in relevant part, that:

 

[F]rom 2010 to 2012, Respondent was using the domain <VictoriasSecretWholesale.com> to redirect potential visitors to a website (<WorldsSexiestWholesale.com>) which commenced in bona fide eCommerce; eCommerce which was mainly based on the solicitation of Complainants [sic] products; products which were purchased via “Wholesale” from Complainant and resold via traditional, professional business / wholesale methods via the internet.  In order to successfully solicit Complainants products, the complaints [sic] Trademark must be used in compliance with Nominative Fair Use. It is impossible to identify Victoria’s Secret products being solicited at Wholesale / Liquidation / Discounted prices without the use of such words.

 

Further, Respondent contends, in relevant part, that:

 

1.    The Disputed Domain Name is not confusingly similar to Complainant’s VICTORIA’S SECRET trademark because, inter alia, “Respondent only used as much of the mark as is necessary for the identification, origin of products and method of resale of the brand” and “Respondent has done nothing to suggest sponsorship or endorsement by the trademark holder.”

 

2.    Respondent has rights or legitimate interests in the Disputed Domain Name because, inter alia, “’<VictoriasSecretWholesale.com>’ is a mere redirection to the website <WorldsSexiestWholesale.com>; which is designed to be an <Amazon.com>-like website which only caters to women’s products. Victoria’s Secret/’Limited Brands’ is currently, and has always been, the largest quantity of products carried by <WorldsSexiestWholesale.com>.”

 

3.    The Disputed Domain Name was not registered and is not being used in bad faith because “[t]here is no basis for the claim that the redirected domain would, in any way, have any likelihood of causing confusion.”

 

Finally, Respondent contends that, apparently because of action taken by Respondent’s web hosting service in response to a notice filed by Complainant pursuant to the Digital Millennium Copyright Act (“DMCA”), “Respondent has had this domain seized and removed from Respondents [sic] account” and, therefore, “[t]here is, and has been, no further actions Respondent can take in regard to this Domain, as the property was stripped from Respondent over two (2) months ago.”

 

 

FINDINGS

 

Based on the evidence, the Panel finds that Complainant has rights in and to the trademark VICTORIA’S SECRET, as described more fully above, which was first used at least as early as June 12, 1977; the Disputed Domain Name was created on December 1, 2010; the Disputed Domain Name was previously used in connection with a website using the domain name <worldssexiestwholesale.com>, which website offered for sale various products, including but not limited to products that are competitive with those offered by Complainant under its VICTORIA’S SECRET trademark and which may have included Complainant’s actual products.

 

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 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

 

Based upon the trademark registrations cited by Complainant (including U.S. Reg. No. 1,146,199) it is apparent that Complainant has rights in the trademark VICTORIA’S SECRET.  This finding is consistent with numerous previous panels that also have considered the same trademark, including a previous decision by this same Panelist, Victoria's Secret Stores Brand Management, Inc. v. Privacy Protect / Privacy Protection, NAF Claim No. 1404667 (transfer of <victoriasecretc.com>).

 

As to whether the Disputed Domain Name is identical or confusingly similar to the VICTORIA’S SECRET trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “victoriassecretwholesale”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.

 

The Panel agrees with the previous decisions under the Policy cited by Complainant also relating to the VICTORIA’S SECRET trademark, that “[b]y registering a domain name that merely adds a generic term to the famous mark VICTORIA’S SECRET, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the web site to which it resolves.”  Citing, e.g., Victoria's Secret Stores Brand Management, Inc. v. Levan Odilavadze, NAF Claim No. 1407499 (transfer of <victoriasecretoffercode.com> and <victoriasecretpromocodes.com>).

 

Further, the Panel also agrees with Complainant’s argument that “[t]he likelihood of confusion is heightened by the choice of term added to Complainant’s mark, namely ‘wholesale,’ because Consumers might believe that <victoriassecretwholesale.com> leads to an official web site of Complainant offering Victoria’s Secret merchandise for wholesale” (citing American International Group, Inc. v. Ling Shun Shing, NAF Claim No. 0206399 (transfer of <aigassurance.com>)).  Whether Respondent actually sold Victoria’s Secret merchandise for wholesale, as Respondent states, is irrelevant to the issue of confusing similarity.

 

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

 

Rights or Legitimate Interests

 

Complainant has argued that Respondent has rights or legitimate interests in the Disputed Domain Name because, inter alia, “’<VictoriasSecretWholesale.com>’ is a mere redirection to the website <WorldsSexiestWholesale.com>; which is designed to be an <Amazon.com>-like website which only caters to women’s products. Victoria’s Secret/’Limited Brands’ is currently, and has always been, the largest quantity of products carried by <WorldsSexiestWholesale.com>.”

 

Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests.  Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name.  If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”  WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1 (“WIPO Overview”).

 

Here, Complainant has made out such a prima facie case, so the burden of production shifts to the Respondent.  Under the Policy, a Respondent can show rights or legitimate interests by demonstrating one of the following, as set forth in paragraph 4(c) of the Policy:

 

1.    before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

2.    you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

3.    you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent has not argued that it has been commonly known by the Disputed Domain Name, nor has Respondent shown that its activities were noncommercial.  Accordingly, the Panel focuses on whether Respondent’s use of the Disputed Domain Name has been in connection with a bona fide offering of goods or services.  The Panel notes that although Respondent has said that its use of the Disputed Domain Name was in connection with a website that sold Complainant’s products, a screenshot provided by Complainant appears to indicate that the website also sold other products, and, importantly, Respondent appears to admit as much when it stated that its website was “mainly based on the solicitation of Complainants [sic] products” (emphasis added).  Further, the Panel’s review of the website using the domain name <worldssexiestwholesale.com> (that is, the website to which the Disputed Domain Name previously redirected visitors) indicates that the site offers products under numerous trademarks in addition to Complainant’s VICTORIA’S SECRET trademark, including (just to name a few) CALVIN KLEIN, FREDERICKS OF HOLLYWOOD, NORDSTROM, and VERA WANG.

 

The WIPO Overview states, paragraph 2.2: “Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder.”  In this case, it appears that at least two of these requirements (i.e., selling only the trademarked goods and including a prominent disclosure) are absent.  Accordingly, the Panel finds that Respondent has not demonstrated rights or legitimate interests in the Disputed Domain Name, and the Panel is satisfied that Complainant has proven the second element of the Policy.

 

Registration and Use in Bad Faith

 

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;  or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct;  or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.  Policy, paragraph 4(b).

 

In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv), given that the Disputed Domain Name was being used (until, apparently, the filing of a DMCA notice by Complainant) in connection with a website that offered for sale products that appear to be competitive with products sold by Complainant under its VICTORIA’S SECRET trademark.  Numerous previous panels have found bad faith under such circumstances.  See, e.g., Nueske's Meat Products, Inc. v. Speedy Web, NAF Claim No. 0638000 (finding bad faith where a disputed domain name is used to “offer products in competition with those of Complainant”) (transfer of <nueskemeats.com> and <nueskewholesale.com>); and Hermes International v. Huang hai, WIPO Case No. D2010-2281 (finding bad faith where a disputed domain name was used “to promote similar or identical goods to the goods being offered by the Complainant”) (transfer of <wholesalehermes.com>).

 

Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <victoriassecretwholesale.com> domain name be TRANSFERRED from Respondent to Complainant.[1]

 

 

Douglas M. Isenberg, Panelist

Dated:  May 2, 2012