V Secret Catalogue, Inc. v. Elite
Enterprises, ltd c/o Johnathan Wilkinson
Claim
Number: FA0507000514822
Complainant is V Secret Catalogue, Inc. (“Complainant”),
represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, DC 20005. Respondent is Elite Enterprises, ltd c/o Johnathan Wilkinson (“Respondent”),
Domocilio Conocido, Cabo San Lucas, 23410, MX.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <victoriassecretlife.com>, registered with
Enom, 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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 15, 2005.
On
July 13, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <victoriassecretlife.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
July 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 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@victoriassecretlife.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
August 11, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Louis E.
Condon 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretlife.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 <victoriassecretlife.com> domain name.
3. Respondent registered and used the <victoriassecretlife.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
V Secret Catalogue, Inc., is an internationally known retailer of women’s
lingerie, beauty products, outerwear and gift items. Domestically, Complainant operates over 1,000 Victoria’s Secret
retail stores. Complainant also
operates international mail catalogues and offers Internet sales. Complainant operates its main website at the
<victoriassecret.com> domain name.
Complainant
has used the VICTORIA’S SECRET mark in commerce since June 12, 1977. Complainant has invested substantial
resources into promoting its VICTORIA’S SECRET mark. As a result of Complainant’s wide-spread, continuous and
prominent use of the VICTORIA’S SECRET mark, this mark has acquired significant
goodwill and public recognition.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the VICTORIA’S SECRET mark (e.g. Reg. No.
1,146,199 issued Jan. 20, 1981; Reg. No. 1,924,706 issued Oct. 3, 1995; Reg.
No. 1,908,042 issued Aug. 1, 1995; Reg. No. 1,935,346 issued Nov. 14, 1995;
Reg. No. 2,099,903 issued Sept. 23, 1997; Reg. No. 2,168,500 issued June 23,
1998 and Reg. No. 2,330,305 issued Mar. 14, 2000).
Respondent
registered the <victoriassecretlife.com> domain name on December
17, 2003. Respondent is using the
domain name to divert Internet users to Respondent’s website which offers
escort services.
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. 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 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); see also 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.").
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 rights in the VICTORIA’S SECRET mark through registration with the
USPTO and through 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).
Respondent’s <victoriassecretlife.com>
domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark
because the domain name incorporates Complainant’s mark in its entirety and
deviates with the removal of the apostrophe and the additions of the generic
term “life” and the top-level domain “.com.”
The removal of an apostrophe and the additions of a generic term and a
top-level domain do not negate the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to Complainant’s mark); see also Body Shop Int’l PLC v. CPIC NET,
D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name
<bodyshopdigital.com> is confusingly similar to Complainant’s THE BODY
SHOP trademark); see also Chi-Chi’s,
Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the
domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S
mark, despite the omission of the apostrophe and hyphen from the mark); see
also 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).
The
Panel finds that ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent does not have rights or legitimate interests in the <victoriassecretlife.com>
domain name. When a complainant
establishes a prima facie case pursuant
to Policy ¶ 4(a)(ii), the burden shifts to the respondent to prove that it has
rights or legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have 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 or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent is
using the <victoriassecretlife.com> domain name to redirect
Internet users to its commercial website, which offers escort services. Respondent’s use of a domain name featuring
Complainant’s VICTORIA’S SECRET mark in its entirety to redirect Internet users
to its website that offers escort services is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it
a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet
users seeking Complainant's website to a website of Respondent and for
Respondent's benefit is not a bona fide offering of goods or services under
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v.
Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the
respondent’s use of the disputed domain name to
redirect Internet users to websites unrelated to the complainant’s mark,
websites where the respondent presumably receives a referral fee for each
misdirected Internet user, was not a bona fide offering of goods or
services as contemplated by the Policy).
Respondent has
not offered any proof, and there is no indication in the record, suggesting
that Respondent is commonly known by the <victoriassecretlife.com>
domain name. Furthermore, Respondent
has neither permission nor a license to use Complainant’s mark. Thus, Respondent has not established rights
or legitimate interests in the <victoriassecretlife.com> 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); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered a domain name containing a confusingly similar version of
Complainant’s well-known mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet
users searching under Complainant’s VICTORIA’S SECRET mark to Respondent’s
commercial website. The Panel infers
that Respondent receives click-through fees for diverting Internet users
searching for Complainant to its own escort service website. The Panel finds that Respondent registered
and used the <victoriassecretlife.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
Moreover,
Respondent’s registration of a domain name that adds a generic term to
Complainant’s well-known registered mark suggests that Respondent knew of
Complainant’s rights in the VICTORIA’S SECRET mark. Furthermore, Respondent is deemed to have actual or constructive
knowledge of Complainant’s mark due to Complainant’s registration with the
USPTO. Thus, the Panel finds that
Respondent registered and used the domain name in bad faith because Respondent
chose the <victoriassecretlife.com> domain name based on the
distinctive and well-known qualities of Complainant’s VICTORIA’S SECRET
mark. 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.”); 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 Pavillion
Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000)
(finding that the “domain names are so obviously connected with the
Complainants that the use or registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <victoriassecretlife.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
August 24, 2005
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