V Secret Catalogue, Inc. v. wcs a/k/a William Sirola
Claim Number: FA0510000575596
Complainant is V Secret Catalogue, Inc. (“Complainant”), represented by Melise Blakeslee of McDermott Will & Emery LLP, 600 Thirteenth Street, N.W., Washington, DC 20005. Respondent is wcs a/k/a William Sirola (“Respondent”), 6510 Winfield Blvd., Margate, FL 33063.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ukvictoriassecret.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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2005.
On Ocober 13, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <ukvictoriassecret.com> domain name 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 October 18, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 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@ukvictoriassecret.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin 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 <ukvictoriassecret.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 <ukvictoriassecret.com> domain name.
3. Respondent registered and used the <ukvictoriassecret.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, V Secret Catalogue, Inc., uses its famous
VICTORIA’S SECRET mark in connection with the sale of women’s lingerie, beauty
products, outerwear and gift items.
Complainant offers its items in more than 1000 retail stores located
throughout the United States and in conjunction with its international mail
order catalogue sales. In addition,
Complainant also offers its proudcts via the Internet through its website at
the <victoriassecret.com> domain name.
Complainant owns eighteen valid and subsisting registrations
with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S
SECRET mark and several variations thereof (i.e, Reg. No. 1,908,042 issued
August 1, 1995).
Respondent registered the <ukvictoriassecret.com> domain name on December 14, 2003. The disputed domain name resolves to a website that offers competing lingerie products.
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 provided evidence of its registration of the
VICTORIA’S SECRET mark with the USPTO, which the Panel determines to be
sufficient to establish Complainant’s rights in the mark for purposes of Policy
¶ 4(a)(i). See 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.”); see also 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.”).
The <ukvictoriassecret.com> domain name differs from Complainant’s famous VICTORIA’S SECRET mark with the addition of the geographic abbreviation “uk” and the omission of the apostrophe in Complainant’s mark. These changes are minor and do not create a domain name distinct from Complainant’s mark. See 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 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 MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom). Furthermore, the use of the generic top-level domain “.com” in the domain name is irrelevant to this analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Thus, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s registered mark.
Accordingly, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Respondent’s use of the <ukvictoriassecret.com>
domain name to offer competing lingerie products clearly indicates that
Respondent intended to benefit by diverting Complainant’s potential customers
to Respondent’s competing website. Such
competing use based on an intent to profit from the goodwill associated with
Complainant’s VICTORIA’S SECRET mark is not considered 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 Glaxo Group Ltd. v. WWW
Zban, FA 203164 (Nat. Arb. Forum Dec. 1,
2003) (finding that the respondent was not using the domain name within the
parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site); 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”).
Complainant asserts that Respondent is not commonly known by the <ukvictoriassecret.com> domain name, and the WHOIS information lists Respondent as “wcs” and “William Sirola.” Based upon Complainant’s assertions and the record, the Panel finds that there is no evidence suggesting that Respondent is commonly known by the disputed domain name. Thus, Respondent has failed to establish rights or legitimate interests in the domain name 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 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").
Thus, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
A significant portion of Complainant’s business includes the sale of women’s lingerie. Thus, Respondent’s use of the <ukvictoriassecret.com> domain name, which includes Complainant’s VICTORIA’S SECRET mark in its entirety, to sell women’s lingerie suggests that Respondent registered the domain name primarily to disrupt the business of its competitor. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Furthermore, the inclusion of Complainant’s famous VICTORIA’S SECRET mark in a domain name for a website offering competing lingerie products clearly evidences an intent on the part of Respondent to benefit from a likelihood of confusion that may lead Internet users to Respondent’s commercial website. Respondent’s attempt to benefit from the fame and goodwill associated with Complainant’s mark is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Thus, 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 <ukvictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 28, 2005
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