V Secret Catalogue, Inc. v. Admin c/o
LaPorte Holdings
Claim
Number: FA0504000467778
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 Admin c/o LaPorte Holdings (“Respondent”), 5482 Wilshire Boulevard, #1928,
Los Angeles, CA 90036.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <surfvictoriassecret.com>, <victoriassecretfashion.com>,
<victoriassecretes.com>, and <victoriassecreet.com>,
registered with Nameking.com, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 28, 2005.
On
April 28, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <surfvictoriassecret.com>,
<victoriassecretfashion.com>, <victoriassecretes.com>,
and <victoriassecreet.com> are registered with Nameking.com, Inc.
and that Respondent is the current registrant of the names. Nameking.com, Inc.
has verified that Respondent is bound by the Nameking.com, 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
May 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 23, 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@surfvictoriassecret.com,
postmaster@victoriassecretfashion.com, postmaster@victoriassecretes.com, and
postmaster@victoriassecreet.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
June 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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 <surfvictoriassecret.com>,
<victoriassecretfashion.com>, <victoriassecretes.com>,
and <victoriassecreet.com> domain names are confusingly similar to
Complainant’s VICTORIA’S SECRET marks.
2. Respondent does not have any rights or
legitimate interests in the <surfvictoriassecret.com>,
<victoriassecretfashion.com>, <victoriassecretes.com>,
and <victoriassecreet.com> domain names.
3. Respondent registered and used the <surfvictoriassecret.com>,
<victoriassecretfashion.com>, <victoriassecretes.com>,
and <victoriassecreet.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant bases
its trademark rights in the VICTORIA’S SECRET mark, and variations
thereof. This family of marks has been
adopted and continuously used in commerce by Complainant, its licensees, and
predecessors since as early as June 12, 1977 in connection with the sale of, inter
alia, women’s lingerie, beauty products, outerwear, and gift items. The VICTORIA’S SECRET mark is also used in
connection with international mail order catalogue sales and Internet commerce
through Complainant’s website, located at <victoriassecret.com>.
The VICTORIA’S
SECRET mark is used as the name of over 1,000 Victoria’s Secret retail stores
located throughout the United States.
In 2004, more than $3.1 billion of merchandise was sold bearing or in
connection with the VICTORIA’S SECRET mark.
Complainant
registered the VICTORIA’S SECRET mark with the U.S. Patent and Trademark Office
on January 20, 1981 in connection with “women’s lingerie” (Reg. No.
1,146,199).
Respondent
registered the <surfvictoriassecret.com> domain name on March 12,
2004. The domain name resolves to a
generic search engine website. On the
left hand side of the webpage is a box entitled “Popular Links.” Such links include “Victoria Secret,”
“Victoria,” “Secret,” “Victoriasecret,” “Plus Size Lingerie,” and “Wedding
Lingerie,” inter alia. The
webpage also contains a variety of links to other clothing, fashion, and retail
stores and services.
Respondent
registered the <victoriassecretfashion.com> domain name on
November 18, 2003. The domain name
resolves to a generic search engine website, which contains the same
information and links located at the <surfvictoriassecret.com> domain
name.
Respondent
registered the <victoriassecretes.com> domain name on December 9,
2002.
On the left hand
side of the webpage is a box entitled “Popular Links.” Such links include “Victorias Secrets,”
“Lingerie,” “Victoria Secret,” “Panties,” and “Sleepwear,” inter alia. The webpage also contains a variety of links
to other clothing, fashion, and retail stores and services.
Respondent
registered the <victoriassecreet.com> domain name on December 29,
2002. The domain name resolves to a
generic search engine website, which contains nearly identical information and
links located at the <victoriassecretes.com> domain name.
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 has
established a presumption of valid trademark rights in the VICTORIA’S SECRET
mark as the result of Complainant’s federal registration of the mark. Without a response, that presumption stands. Therefore, the Panel finds that Complainant
has established rights in the VICTORIA’S SECRET mark under Policy ¶
4(a)(i). 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 V Secret
Catalogue, Inc. v. Oro en Arias S.A., FA 301730 (Nat. Arb. Forum Sept. 7,
2004) (“Complainant has established in this proceeding that it has rights in
the VICTORIA’S SECRET mark through registration with the United States Patent
and Trademark Office….”).
A domain name
that incorporates a third-party mark and merely omits an apostrophe and adds a
generic or descriptive term to the mark has been held to be confusingly similar
to the mark under Policy ¶ 4(a)(i). In
this case, the <surfvictoriassecret.com> and
<victoriassecretfashion.com> disputed domain names each incorporate
Complainant’s VICTORIA’S SECRET mark in its entirety. The domain names merely omit the apostrophe from Complainant’s
mark and add the terms “surf” and “fashion.”
Consistent with prior decisions under the Policy, the Panel finds that
these domain names are confusingly similar to Complainant’s VICTORIA’S SECRET
mark. See V Secret Catalogue, Inc.
v. Wig Distrobutions, FA 301727 (Nat. Arb. Forum Sept. 7, 2004) (finding
the <victoriassecrethair.com> domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark); see also V Secret Catalogue, Inc. v.
Oro en Arias S.A., FA 301730 (Nat. Arb. Forum Sept. 7, 2004) (finding the
<victoriassecretpoker.com> domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark); see also Victoria's Secret et al v.
Learmont, FA 96553 (Nat. Arb. Forum Mar. 2, 2001) (finding the domain name
<victoriassecretlingeriemodels.com> confusingly similar to Complainant’s
VICTORIA’S SECRET mark).
A domain name
that incorporates a third-party mark and merely omits an apostrophe and adds
one or two letters has frequently been found to be confusingly similar to the
mark under Policy ¶ 4(a)(i). In this
case, the <victoriassecretes.com> and
<victoriassecreet.com> domain names both incorporate Complainant’s
VICTORIA’S SECRET mark in its entirety.
The domain names merely add the letters “es” and “e” to Complainant’s
VICTORIA’S SECRET mark. Consistent with
prior decisions under the Policy, the Panel finds that these domain names are
confusingly similar to Complainant’s mark.
See V Secret Catalogue, Inc. v. Khan, FA 244737 (Nat. Arb. Forum Apr.
23, 2004) (finding the <victoriassectret.com> domain name confusingly
similar to Complainant’s VICTORIA’S SECRET mark); see also V Secret
Catalogue, Inc. et al v. Artco, Inc., FA 94342 (Nat. Arb. Forum May 9,
2000) (finding
the <victoriassecrets.net> domain name confusingly similar to
Complainant’s VICTORIA’S SECRET mark).
Complainant has
established Policy ¶ 4(a)(i).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the disputed
domain names. It is incumbent upon
Respondent to advance concrete evidence that demonstrates its rights or
legitimate interests in the domain names because this information is “uniquely
within the knowledge and control of the respondent.” G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002). Since Respondent has
failed to advance such evidence, the Panel construes this omission as an
implicit admission that Respondent lacks rights and legitimate interests in the
disputed domain names. See
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 interests in the domain names); see
also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests
where Respondent fails to respond).
Respondent
has advanced no evidence that would suggest it is commonly known by the
disputed domain names pursuant to Policy ¶ 4(c)(ii). Moreover, the record fails to indicate the same. Therefore, the Panel finds that Respondent
is not commonly known by any of the disputed domain names. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); 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).
Respondent
is using the disputed domain names to divert Internet traffic to websites that
offer search services and hyperlinks to various products that compete with
Complainant’s goods and services under the VICTORIA’S SECRET mark, including
lingerie. This is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial
or fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services); see also V Secret Catalogue, Inc. v. Wig Distrobutions, FA
301727 (Nat. Arb. Forum Sept. 7, 2004) (finding that using the <victoriassecrethair.com>
domain name to divert Internet traffic to a website that offered search
services and hyperlinks to competing products did not qualify as a bona fide
offering of goods or services, nor a legitimate noncommercial or fair use).
Complainant
has established Policy ¶ 4(a)(ii).
Respondent is in
violation of Policy ¶ 4(b)(iv) because it has intentionally attempted to
attract Internet users to its websites for commercial gain by creating a
likelihood of confusion with Complainant’s mark. First, Respondent registered four domain names on four different
occasions, each of which are confusingly similar to Complainant’s famous
VICTORIA’S SECRET mark. Second,
Respondent has used those domain names to attract Internet users to its own
websites that offer search services and hyperlinks to various products that
compete with Complainant’s business, including lingerie. Third, it is reasonable for this Panel to
infer that Respondent is earning some sort of revenue from the Internet users
that access its links. In the absence
of a response, these facts and inferences lead the Panel to conclude that
Respondent has violated Policy ¶ 4(b)(iv).
See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using Complainant’s famous
marks and likeness); see also 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).
The registration
of a domain name that incorporates a famous third-party trademark has
frequently been held to be evidence of bad faith because the registrant either
knew or should have known of the third-party’s rights in the trademark prior to
registration. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June
14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration of the <yahooventures.com>
domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); see also Victoria's Secret et al v. Serbjeet
Ahluwalia, FA 96559 (Nat. Arb. Forum Mar. 14, 2001) (“Complainants have
established their long-standing use of their famous mark. The reasonable
inference may be drawn; therefore, that Respondent knew or had to have known
about Complainants’ famous mark prior to registering the domain name in
question. This is evidence of bad faith.”).
Complainant’s
VICTORIA’S SECRET mark is established, well known, and famous. In fact, prior panels have acknowledged the
fame of Complainant’s mark. E.g., Victoria's Secret et al v. Victoria's
Cyber Secret, FA 96536 (Nat. Arb. Forum Mar. 9, 2001); Victoria's Secret
et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001); Victoria's
Secret et al v. Serbjeet Ahluwalia, FA 96559 (Nat. Arb. Forum Mar. 14,
2001); V Secret Catalogue, Inc. v. Oro en Arias S.A., FA 301730 (Nat.
Arb. Forum Sept. 7, 2004).
As one panel has
stated in a prior case filed by Complainant, “The VICTORIA’S SECRET mark is so
famous that the Respondent had to have been aware of Complainants’ mark prior
to registering the domain names at issue.”
Victoria's Secret et al v. Netchem, Inc., FA 96560 (Nat. Arb.
Forum Apr. 2, 2001). This Panel
agrees.
Moreover, this
Panel adopts the following language from the panel in V Secret Catalogue,
Inc. v. Oro en Arias S.A., FA 301730 (Nat. Arb. Forum Sept. 7, 2004):
Respondent’s
registration of the [disputed] domain name, which incorporates Complainant’s
well-known VICTORIA’S SECRET mark in its entirety, adding only a generic or
descriptive term, suggests that Respondent knew of Complainant’s rights in the
VICTORIA’S SECRET mark. Furthermore,
Complainant’s mark has been advertised extensively in the United States and
internationally via the Internet, catalogues, and other popular advertising
campaigns. Thus, the Panel finds that
Respondent chose the [disputed] domain name based on the distinctive and
well-known qualities of Complainant’s mark.
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <surfvictoriassecret.com>,
<victoriassecretfashion.com>, <victoriassecretes.com>,
and <victoriassecreet.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 13, 2005
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