Victoria's Secret Stores Brand Management, Inc. v. Jarred Magna
Claim Number: FA1404001552960
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Anne E. Naffziger of LEYDIG, VOIT & MAYER, LLP, California, USA. Respondent is Jarred Magna (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <victoriassecret.clothing> and <victoriasecret.clothing>, registered with 101domain, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2014; the National Arbitration Forum received payment on April 7, 2014.
On April 7, 2014, 101domain, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecret.clothing> and <victoriasecret.clothing> domain names are registered with 101domain, Inc. and that Respondent is the current registrant of the names. 101domain, Inc. has verified that Respondent is bound by the 101domain, 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 April 8, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2014 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@victoriassecret.clothing, postmaster@victoriasecret.clothing. Also on April 8, 2014, 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 April 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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.
Panel notes that on April 9, 2014 Respondent emailed the Forum stating: “We have told Victoria's Secret that we are willing to give them both domains for the cost, however haven't heard back.” Not only did Respondent want to be compensated for transfer of the domain names, but there is no evidence of any reaction to that offer from Complainant. In these circumstances, Panel is not prepared to treat this as a “Consent-to-Transfer” case.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in VICTORIA’S SECRET and alleges that the disputed domain names are, as the case may be, either identical or confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
However, for reasons which follow, Panel finds it appropriate to include here the body of an email sent by Respondent to the Forum on April 30, 2014:
“This is the first time we have been in a dispute of this matter, so don't quite understand exactly how the proceedings work.
We purchased multiple domains via 101domain.com when the new gTLD's from Donuts became available including the 2 in dispute (Victoriassecret.clothing) & (Victoriasecret.clothing).
When we checked out, some domains which we purchased came up with a warning from the trademark clearing house, however with the 2 disputed domains, their was no message of IP or ™ infringement in Australia at the time of purchase.
We had some other domains which came u with a warning from the trademark clearing house & elected NOT to continue with the purchase in the instance we may lose those domains.
Our original plans with the 2 disputed domains were to become an affiliate to Victoria's Secret and sell their products through a dedicated site as an authorised affiliate which we had in the process of pitching to the company, however were asked to hand over the domains without compensation, meaning we would lose our original fee for not only the domains, but also the premium price we paid securing them in the Landrush phase.
When VS made it clear they wanted the domains and didn't want to have us as an affiliate we told them we would happily sell the domains to them with no plans to tarnish or on sell the domains to anyone else.
On Conclusion, we feel that we have been let down by not only 101domain.com, but also the Trademark Clearing House which didn't notify us of any infringement, we had no plans to hold these and sell them at a ridiculous price to the company, we wanted to do FAIR business with them. All we ask for is VS to purchase the domains at the original cost + the premium we paid for securing them at Landrush, after all we were switched on enough to get in early and feel robbed if VS come in after they over a month to secure them in the Sunrise period and take them from us with no compensation.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells clothing, principally lingerie, by reference to the trademark VICTORIA’S SECRET.
2. Complainant owns, inter alia, United States Trademark Reg. No. 1,146,199 registered June 20, 1981 and Australian Trademark Reg. No. 483552 registered March 17, 1988, both for the word mark VICTORIA’S SECRET.
3. The disputed domain names were registered in February 2014.
4. The domain names are not in use and Respondent offered to sell them to Complainant for $3,646.98.
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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.
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, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000; Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under paragraph 4(a)(i) of the Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its trademark registrations in the United States and Australia, the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006); Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)).
Panel finds that the domain name <victoriassecret.clothing> is legally identical to Complainant’s trademark and finds that the <victoriasecret.clothing> domain name is confusingly similar to Complainant’s trademark. The TLD, “.clothing” can be disregarded for the purposes of comparison. The other differences are entirely trivial (see Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) finding that deletion of the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it; see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see finally Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) 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
(ii) 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
(iii) 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 trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information identifies Respondent as “Jarred Magna” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. The disputed domain names have not been used in connection with a bona fide offering of goods or services prior to notice of the dispute or at any time. Respondent offered to sell the domain names to Complainant for $3,646.98.
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(i) above. Respondent’s actions are a clear example of the type of behavior against which the Policy safeguards. Respondent’s own statements to the Forum indicate that he registered the domain names opportunistically and with the primary intention to profit from their sale. Respondent then did offer to sell the domain names to Complainant for $3,646.98. Panel finds registration and use in bad faith (see, for example, Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, D2014-0206 (WIPO March 14, 2014); Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriassecret.clothing>, ,<victoriasecret.clothing> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 8, 2014
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