V Secret Catalogue, Inc. v. Click Search
Claim
Number: FA0504000467053
Complainant is V Secret Catalogue, Inc. (“Complainant”),
represented by Melise Blakeslee, of McDermott, Will and Emery,
600 13th Street, N.W., Washington, DC 20005.
Respondent is Click Search (“Respondent”),
650 South First Street, San Jose, CA 95113.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <victoriassecet.com>, registered with Tucows
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 25, 2005.
On
April 22, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <victoriassecet.com> is registered with
Tucows Inc. and that Respondent 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-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 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@victoriassecet.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 19, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecet.com>
domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
2. Respondent does not have any rights or
legitimate interests in the <victoriassecet.com> domain name.
3. Respondent registered and used the <victoriassecet.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 eighteen trademark registrations with the United States
Patent and Trademark Office for the VICTORIA’S SECRET mark and variations
thereof (e.g., 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 <victoriassecet.com> domain name October 27,
2000. The domain name resolves to a
website featuring a link for the <adultfriendfinder.com> adult-oriented
website which bills itself as “the World’s Largest SEX and SWINGER Personals
site.”
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.
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
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 the mark
in commerce. 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. The respondent has the
burden of refuting this assumption).
Respondent’s <victoriassecet.com>
domain name is confusingly similar to Complainant’s well-known VICTORIA’S
SECRET mark because the domain name incorporates Complainant’s mark in its
entirety and deletes the letter “r” from the word “secret.” The deletion of the letter “r” from
Complainant’s well-known mark does not negate the confusingly similar aspects
of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency to be confusingly similar to the trademark
where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder
& Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
<statfarm.com> domain name is confusingly similar to the complainant’s
STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the <compq.com> domain name is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain name does not significantly change the overall impression of the mark).
Furthermore, the
<victoriassecet.com> domain name is confusingly similar to
Complainant’s VICTORIA’S SECRET mark because it merely adds the generic
top-level domain “.com” to Complainant’s mark.
The addition of a generic top-level domain does not distinguish the
disputed domain name from Complainant’s mark.
See 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); see also Sporty's
Farm L.L.C. vs. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert.
denied, 530 U.S. 1262 (2000), ("For consumers to buy things or
gather information on the Internet, they need an easy way to find particular
companies or brand names. The most common method of locating an unknown domain
name is simply to type in the company name or logo with the suffix
.com.").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <victoriassecet.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights to or legitimate interests in the domain
name. Thus, due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent lacks rights and
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat.
Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that
the respondent has no rights or legitimate interests with respect to the domain
name, it is incumbent on the 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 the
complainant asserts that the respondent has no rights or legitimate interests
with respect to the domain, the burden shifts to the 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 the respondents’ failure to respond can be
construed as an admission that they have no rights or legitimate interests in
the domain names).
Furthermore, the
Panel finds that Complainant has made the prima facie showing. Therefore, since Respondent has not
responded to the Complaint, the Panel is entitled to accept all reasonable
allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a
response, the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also 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).
Respondent is
using the <victoriassecet.com> domain name to redirect Internet
users to an adult-oriented website. In
fact, Respondent posted a website at the domain name that bills itself as “the
World’s Largest SEX and SWINGER Personals site.” 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 is 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 the 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 the respondent’s use of the disputed domain names
to divert Internet users to a website that features pornographic material, has
been “consistently held” to be neither a bona fide offering of goods or
services . . . nor a legitimate noncommercial or fair use).
Respondent has
offered no evidence, and no proof in the record suggests, that Respondent is
commonly known by the <victoriassecet.com> domain name. Furthermore, Complainant has not authorized
or licensed Respondent to use its VICTORIA’S SECRET mark. Thus, Respondent has not established rights
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 the respondent does not
have rights in a domain name when the 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 the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <victoriassecet.com> domain name, that is
confusingly similar to Complainant’s well-known VICTORIA’S SECRET mark, for
Respondent’s commercial gain.
Respondent’s domain name redirects Internet users who seek Complainant’s
VICTORIA’S SECRET mark to Respondent’s commercial pornographic website. Furthermore, Respondent plans to unfairly
and opportunistically benefit from the goodwill associated with Complainant’s
VICTORIA’S SECRET mark. 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 the 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 the respondent attracted users to a website sponsored by the
respondent and created confusion with the 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.").
Moreover, Respondent registered the <victoriassecet.com> domain name with actual or constructive knowledge of
Complainant’s rights in the VICTORIA’S SECRET mark due to Complainant’s
registration of the mark with the United States Patent and Trademark
Office. Registration of a domain name
featuring another’s mark, despite actual or constructive knowledge of another’s
rights in the mark, is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
Furthermore, Respondent’s domain name redirects Internet users searching
for Complainant’s business to a website featuring adult-oriented products and
services. Respondent’s registration of
a domain that is confusingly similar to Complainant’s registered mark to divert
Internet users to an adult-oriented website, constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See
Wells Fargo & Co. v.
Party Night Inc. and Peter Carrington,
FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that the 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); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of 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 <victoriassecet.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 31, 2005
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