V Secret Catalogue, Inc. v. Bryant Little
Claim
Number: FA0407000301728
Complainant is V Secret Catalogue, Inc. (“Complainant”),
represented by Melise Blakeslee of McDermott Will & Emery LLP, 600 13th Street, N.W., Washington, DC, 20005. Respondent is Bryant Little (“Respondent”), 22221 Cypresswood Dr., Unit 1315,
Spring, TX 77373.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <victoriassecretcam.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically July 22, 2004; the Forum received a hard copy of the
Complaint July 23, 2004.
On
July 22, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the Forum that the domain name <victoriassecretcam.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide verified that Respondent is bound by the Melbourne It,
Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
July 27, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 16, 2004, by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@victoriassecretcam.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 19, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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. The domain name registered by Respondent,
<victoriassecretcam.com>, is confusingly similar to Complainant’s
VICTORIA’S SECRET mark.
2. Respondent has no rights to or legitimate
interests in the <victoriassecretcam.com> domain name.
3. Respondent registered and used the <victoriassecretcam.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, V
Secret Catalogue, Inc., is in the women’s lingerie, beauty products, outerwear,
and gift items business.
Complainant
holds approximately nineteen trademark registrations with the United States
Patent and Trademark office for the VICTORIA’S SECRET mark and variations
thereof (including Reg. No. 1,146,199 issued January 20, 1981; Reg. No.
1,924,706 issued October 3, 1995 and Reg. No. 1,935,346 issued November 14,
1995).
Complainant has
some 1000 VICTORIA’S SECRET retail stores located throughout the United States. Additionally, Complainant uses the
VICTORIA’S SECRET mark in association with its international mail order
catalogue sales and for Internet commerce at its website at the
<victoriassecret.com> domain name.
Complainant’s
sales of VICTORIA’S SECRET merchandise in 2003 totaled some $3.81 billion, and
its prominent advertising campaign featuring famous models is well known
throughout the world. In fact,
Complainant’s VICTORA’S SECRET Internet fashion show in 1999 drew a record 1.5
million website visitors. In May 2000,
Complainant’s Internet fashion show drew over two million people from 140
countries. The VICTORIA’S SECRET brand
has also been promoted by annual network television broadcasts of its fashion
show, which aired from 2001 until 2004.
Respondent
registered the <victoriassecretcam.com> domain name August 30,
2001. The domain name resolves to a
website entitled the “Victoria’s Secret Sexy Web CAM site,” which informs
Internet users that they can access an adult website for “a very low monthly price.” Additionally, the website claims to be “The
Best Sex Site You Ever Joined!”
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights and
legitimate interests in the VICTORIA’S SECRET mark through registration with
the United States Patent and Trademark Office and by continuous use of its mark
in commerce for the last twenty-seven years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The <victoriassecretcam.com>
domain name that Respondent registered is confusingly similar to Complainant’s
well-known VICTORIA’S SECRET mark because the domain name incorporates
Complainant’s mark in its entirety, adding only the generic or descriptive word
“cam.” The mere addition of a generic
or descriptive word to a registered mark does not negate the confusing
similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established that it has legal and common law rights to and legitimate interests
in the mark in question and asserts that Respondent has no such rights to or
legitimate interests in the <victoriassecretcam.com> domain
name. Complainant made more than a prima
facie showing of such rights. Due to Respondent’s failure to respond to the
Complaint, it is assumed that Respondent lacks rights and legitimate interests
in the disputed domain name. Moreover,
once Complainant makes the necessary prima facie showing, the burden
shifts to Respondent to show that it does have rights or legitimate interests
in the domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that
Respondent has no rights or legitimate interests with respect to the domain
name it is incumbent on Respondent to come forward with concrete evidence
rebutting this assertion because this information is “uniquely within the
knowledge and control of the respondent”); see also Do The Hustle,
LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once
Complainant asserts that Respondent has no rights or legitimate interests with
respect to the domain, the burden shifts to Respondent to provide credible
evidence that substantiates its claim of rights and legitimate interests in the
domain name); see also Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that Respondents’ failure to respond can be construed as an admission
that they have no legitimate interest in the domain names).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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.”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent’s
stated and intended use of the <victoriassecretcam.com> domain
name is to redirect Internet users to a pornographic website. In fact, Respondent posted a website at the
domain name that promises to deliver for one monthly price: “The Best Sex Site
You Ever Joined.” Respondent’s use of a
domain name that is confusingly similar to Complainant’s VICTORIA’S SECRET mark
to redirect Internet users interested in Complainant’s products and services to
a website that features commercial pornographic material is not a use in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
Oxygen Media, LLC v. Primary Source,
D2000-0362 (WIPO June 19, 2000) (finding no rights or legitimate interests
where Respondent threatened to develop the domain name in question into a
pornography site); see also Paws, Inc. v. Zuccarini, FA 125368
(Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is
confusingly similar to an established mark to divert Internet users to an
adult-oriented website “tarnishes Complainant’s mark and does not evidence
noncommercial or fair use of the domain name by a respondent”); see also
McClatchy Mgmt. Serv., Inc. v. Carrington, FA 155902 (Nat. Arb. Forum
June 2, 2003) (holding that Respondent’s use of the disputed domain names
to divert Internet users to a website that features pornographic material, had
been “consistently held” to be neither a bona fide offering of goods or services
. . . nor a legitimate noncommercial or fair use).
Finally,
Respondent offered no evidence, and no proof in the record suggests, that
Respondent is commonly known by the <victoriassecretcam.com>
domain name. Furthermore, Complainant
has not authorized or licensed Respondent to use its VICTORIA’S SECRET
mark. Thus, Respondent has not
established rights to or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally
registered the <victoriassecretcam.com> domain name that contains
in its entirety Complainant’s well-known VICTORIA’S SECRET mark for
Respondent’s commercial gain.
Respondent’s domain name diverts Internet users who seek Complainant’s
VICTORIA’S SECRET mark to Respondent’s commercial pornographic website through
the use of a domain name that is confusingly similar to Complainant’s
mark. Furthermore, Respondent plans to
unfairly and opportunistically benefit from the goodwill associated with Complainant’s
VICTORIA’S SECRET mark and even purports to be someone named “Victoria” on the
current website. Respondent’s practice
of diversion, motivated by commercial gain, constitutes bad faith registration
and use pursuant 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 Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) ("While an intent to confuse consumers is not required for a
finding of trademark infringement, intent to deceive is strong evidence of a
likelihood of confusion.").
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use. The Panel looks to the totality of the
circumstances. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent
registered a domain name confusingly similar to Complainant’s VICTORIA’S SECRET
mark with the intent to divert Internet users seeking Complainant’s products
and services to a pornographic website that states that it will charge monthly
fees to allow Internet users to access pornographic material. The Panel finds that Respondent’s use of the
<victoriassecretcam.com> domain name to divert Internet users
seeking Complainant’s VICTORIA’S SECRET mark to a pornographic website is
evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v.
Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith.”); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat.
Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users
to his website for commercial gain and linked his website to pornographic
websites); see also Wells Fargo & Co. v. Party Night Inc., FA
144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith).
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 <victoriassecretcam.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 2, 2004
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