V Secret Catalogue, Inc. v. Evergreen Ezines, Inc.
Claim Number: FA0606000734163
Complainant is V Secret Catalogue, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, 600 13th Street, N.W., Washington, DC 20005. Respondent is Evergreen Ezines, Inc. (“Respondent”), represented by Jeff Grant, of Fox Spillane LLP 1880 Century Park East, Suite 1004, Los Angeles, CA 90067.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriassecretion.com>, registered with Moniker Online Services, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2006.
On June 27, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriassecretion.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 2006 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@victoriassecretion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge 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.
This proceeding was
terminated by a decision in favor of the Claimant on July 27, 2006. On
August 3, 2006, a Reply was received from the Respondent which in effect
offered to voluntarily transfer the disputed domain name to the Claimant.
However, the decision had already been made. In addition the Reply was not
submitted within the time limit or within a day or so later.
Accordingly the application of the Respondent to permit the Reply to be accepted is denied.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <victoriassecretion.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 <victoriassecretion.com> domain name.
3. Respondent registered and used the <victoriassecretion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, V Secret Catalogue, Inc., sells through its retail
stores, mail order catalogue and Internet website a wide variety of women’s
lingerie, beauty products, swimwear, outerwear and gift items. Complainant, its licensees and predecessors
have used its VICTORIA’S SECRET mark since at least June 12, 1977. Complainant holds several trademark
registrations and applications with the United States Patent and Trademark
Office (“USPTO”) for its VICTORIA’S SECRET mark (Reg. No. 1,935,346 issued
November 14, 1995). Complainant also
operates a website at <victoriassecret.com>.
Respondent
registered the <victoriassecretion.com> domain name on December 1, 2003. The disputed domain name resolves to a
subscription-based adult-oriented website that is unrelated to
Complainant.
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.
The Panel finds that Complainant’s trademark registrations
with the USPTO sufficiently establish Complainant’s rights in the VICTORIA’S
SECRET mark. 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."); 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.”).
Respondent’s <victoriassecretion.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark with the addition of the letters “i,” “o” and “n” on the latter of the two terms, as well as the addition of a generic top-level domain name (“gTLD”). The Panel finds that neither of these additions negates the confusing similarity between Complainant’s mark and Respondent’s disputed domain name. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <victoriassecretion.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s VICTORIA’S SECRET mark, and that Respondent is not associated
with Complainant in any way.
Additionally, Respondent’s WHOIS information does not suggest that
Respondent is commonly known by the <victoriassecretion.com>
domain name, and there is no evidence in the record to suggest that Respondent
is or has ever been known by the disputed domain name. The Panel thus finds that Respondent is not
commonly known by the disputed domain name under 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The evidence on record indicates
that Respondent is using the disputed domain name to operate a website that
displays subscription-based adult oriented content. In Target Brands, Inc. v. Bealo Group S.A., FA
128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that use of the
<targetstore.net> domain name
to redirect Internet users to a pornographic website did not equate to a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). See Am. Online,
Inc. v. Bates, FA 192595 (Nat. Arb. Forum
Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is
confusingly similar to another's mark by linking the domain name to an
adult-oriented website [is] evidence that the registrant lacks rights or
legitimate interests in the domain name.”).
The Panel accordingly finds that Respondent’s use of the disputed domain
name is not 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).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds that Respondent has registered and is using the <victoriassecretion.com> domain name to advertise adult-oriented content available for purchase. The use of a domain name that infringes on another’s trademark for adult-oriented content constitutes registration and use in bad faith of the disputed domain name under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 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)
Moreover, the Panel finds that Respondent’s use of the disputed domain name to advertise adult-oriented content that is available on a paid subscription basis is evidence of bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent is using the disputed domain name for its own commercial benefit. Additionally, the use of Complainant’s mark in the disputed domain name creates a likelihood of confusion as to Complainant’s sponsorship and affiliation with the resulting website. See Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites); 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <victoriassecretion.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 1, 2006
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