V Secret Catalogue, Inc. v sais s
Claim
Number: FA0507000514894
Complainant, V Secret Catalogue, Inc. (“Complainant”),
is represented by Melise R. Blakeslee of McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, DC 20005. Respondent is sais s (“Respondent”), 213 Camrose Avenue, Edgware, HA8 6DQ, GB.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ukvictoriassecrets.com>, registered with Enom,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James
A. Crary 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 15, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <ukvictoriassecrets.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 18, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 8,
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@ukvictoriassecrets.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 James A.
Crary 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 <ukvictoriassecrets.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 <ukvictoriassecrets.com> domain name.
3. Respondent registered and used the <ukvictoriassecrets.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1977,
Complainant, V Secret Catalogue, Inc., has been using the VICTORIA’S SECRET
mark in connection with the sale of women’s lingerie, beauty products,
outerwear, and gift items.
Complainant’s mark is used as the name of over 1,000 retail stores
located throughout the United States. The
retail stores advertise, offer for sale, and sell a wide range of items bearing
Complainant’s mark. Complainant also
uses the VICTORIA’S SECRET mark in conjunction with international mail order
catalogue sales and Internet commerce through Complainant’s website, located at
<victoriassecret.com>.
In 2004,
Complainant sold more than 3.1 billion dollars of merchandise bearing the
VICTORIA’S SECRET mark. Moreover,
Complainant’s advertising campaign, featuring its famous models, has made
Complainant’s mark recognizable around the world. In addition, Complainant’s mark has been prominently used on the
Internet in connection with Complainant’s world-famous online fashion
shows. Complainant’s first live
Internet fashion show in 1999 attracted over 1.5 millions visitors. In 2000, more than 2 million people from
over 140 countries viewed the second annual broadcast of the Internet fashion
show, which prominently featured the VICTORIA’S SECRET mark.
Additionally,
Complainant holds numerous registrations for its VICTORIA’S SECRET mark with
the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No.
1,908,042 issued August1, 1995).
Respondent
registered the <ukvictoriassecrets.com> domain name on December
14, 2003. The disputed domain name
resolves to a website selling lingerie products that compete with
Complainant’s.
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’s
registrations for its VICTORIA’S SECRET mark with the USPTO are sufficient to
establish a prima facie case of rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent did not submit a response in this case. Thus, Complainant’s
presumption of rights in the mark is not disputed. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“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
Panel finds that Complainant has established rights in the mark for purposes of
Policy ¶ 4(a)(i).
Complainant
contends that Respondent’s <ukvictoriassecrets.com> domain name is
confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name makes minor changes
to Complainant’s mark by adding the geographical symbol “uk,” deleting an
apostrophe, and adding the letter “s” to the end of Complainant’s mark. The Panel holds that none of these changes
are sufficient to distinguish Respondent’s domain name from Complainant’s
mark. See InfoSpace, Inc. v. domains
Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users
may believe that the website located at the <dogpileuk.com> domain name
is run by a United Kingdom branch or affiliate of Complainant. . . .
Consequently, the Panel finds that the geographic identifier “uk” does not
significantly distinguish Respondent’s domain name from Complainant’s mark
under Policy ¶ 4(a)(ii).”); see also LOreal USA Creative Inc v. Syncopate.com
– Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the omission of an apostrophe did not significantly distinguish
the domain name from the mark); see also Cream Pie Club v. Halford, FA
95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to
the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood
of confusion caused by the use of the remaining identical mark. The domain name
<creampies.com> is similar in sound, appearance, and connotation”).
Therefore, the
Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<ukvictoriassecrets.com> domain name. Complainant’s assertion establishes a prima facie case and
shifts the burden to Respondent. To
meet its burden, Respondent must provide concrete evidence that it does have
rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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”). The Panel will analyze
whether Respondent could meet its burden of establishing rights or legitimate
interests for purposes of Policy ¶ 4(a)(ii).
Respondent does
not offer any evidence to indicate that it is commonly known by the disputed
domain name. Without such evidence, the
Panel accepts as true Complainant’s allegations that Respondent is not commonly
known by the disputed domain name. See
Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). In fact,
Respondent’s WHOIS information states that Respondent’s name is “sais s.” The Panel concludes that because Respondent
is not commonly known by the disputed domain name, it has not established
rights or legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest 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 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
commonly known by the mark).
Complainant has
provided the Panel with evidence indicating that Respondent is using the
disputed domain name to host a website promoting lingerie products that compete
with Complainant’s products. Because
Respondent failed to submit a response, the Panel accepts Complainant’s
argument that Respondent is using the disputed domain name to confuse Internet
users and divert them from Complainant’s legitimate website to its own. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). The Panel concludes that Respondent is
using the confusingly similar domain name to divert Internet users to a competing
website and is therefore not using the disputed domain name in connection with
a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683
(Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain
name (and Complainant’s mark) to sell products in competition with Complainant
demonstrates neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the name”).
Consequently,
the Panel determines that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
commercially benefiting from the confusing similarity of the disputed domain
name by selling lingerie products that compete with the products Complainant
offers. The Panel holds that such use
constitutes disruption and is evidence of bad faith use and registration under
Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
Additionally,
Respondent’s registration of the confusingly similar <ukvictoriassecrets.com>
domain name provides Respondent with the ability to commercially benefit from
Internet user confusion. Internet users
may believe that they are purchasing products or services from Complainant,
endangering the goodwill associated with Complainant’s VICTORIA’S SECRET
mark. The Panel holds that Respondent’s
capitalization of the goodwill associated with Complainant’s mark is evidence
of bad faith use and registration under Policy ¶ 4(b)(iv). See Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”); see
also Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum
Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its
business, which sold goods in competition with Complainant. This establishes
bad faith as defined in Policy ¶ 4(b)(iv).”).
Accordingly, the
Panel finds that Complainant has satisfied 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 < ukvictoriassecrets.com > domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
August 25, 2005
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