V Secret Catalogue, Inc. v. Vladimir Vladimir c/o Domain 4 Sale
Claim Number: FA0606000734187
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 Vladimir Vladimir c/o Domain 4 Sale (“Respondent”), PO Box 2112, Woodstock, GA 30188.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <iknowvictoriassecret.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.
James A. Carmody, Esq., 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 21, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <iknowvictoriassecret.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 June 28, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 18, 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@iknowvictoriassecret.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 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <iknowvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORISA’S SECRET mark.
2. Respondent does not have any rights or legitimate interests in the <iknowvictoriassecret.com> domain name.
3. Respondent registered and used the <iknowvictoriassecret.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 fashion brand. Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its VICTORIA’S SECRET mark (Reg. No. 1,146,199 issued January 20, 1982; Reg. No. 74,507,663 issued August 1, 1995; Reg. No. 74,503,368 issued October 3, 1995). Complainant uses its VICTORIA’S SECRET mark in connection with the sale of women’s lingerie, beauty products, women’s clothing and shoes, swimwear and gift items. Complainant uses its mark in connection with its brick and mortar stores, its mail order catalogue and its website, operating under the <victoriassecret.com> domain name.
Respondent registered the <iknowvictoriassecret.com> domain name on February 17, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring bathroom fixtures, particularly steam rooms, for sale.
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. The Panel finds that such registration is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). 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 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 [or] have acquired secondary meaning.”).
Respondent’s <iknowvictoriassecret.com> domain
name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Respondent’s domain name incorporates
Complainant’s mark in its entirety, adding the generic terms “I know.” The Panel finds that the addition of generic
terms does not overcome the confusing similarity between the disputed domain
name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly
incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see
also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the <iknowvictoriassecret.com> domain name. Complainant’s assertion constitutes a prima facie case and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). In deciding whether or not Respondent has rights or legitimate interests in the disputed domain name, the Panel may view Respondent’s failure to submit a response as evidence that Respondent lacks rights or legitimate interests by leaving all of Complainant’s assertions unchallenged. 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also 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). The Panel will examine the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent is using the <iknowvictoriassecret.com> domain
name to redirect Internet users to Respondent’s commercial website featuring
bathroom fixtures. Complainant has not
authorized Respondent to use Complainant’s mark in connection with this
offering of goods and services, nor is Complainant’s business in any way
related to the goods and services offered by Respondent at its website. The Panel finds that using a confusingly
similar domain name to redirect Internet users to Respondent’s website
featuring goods and services unrelated to Complainant is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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 Seiko Kabushiki Kaisha v. CS into Tech, FA
198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking
for products relating to the famous SEIKO mark, to a website unrelated to the
mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i),
nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In addition, there is no evidence that Respondent is
commonly known by the <iknowvictoriassecret.com> domain name. Respondent’s WHOIS registration information
identifies Respondent as “Domain 4 Sale, Vladimir Vladimir,” a name with no
resemblance to the disputed domain name.
Further, Complainant asserts that Respondent is not affiliated with
Complainant in any way and that Complainant has not given Respondent permission
to use its mark in a domain name. The
Panel finds that Respondent is not commonly known by the disputed domain name
and thus lacks rights or legitimate interests pursuant to 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 G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <iknowvictoriassecret.com> domain name, which is confusingly similar to Complainant’s VICTORIA’S SECRET mark, to redirect Internet users to its commercial website which features bathroom fixture goods and services, which are completely unrelated to Complainant’s business. Because the disputed domain name is confusingly similar to Complainant’s mark, Internet users seeking Complainant may be inadvertently attracted to Respondent’s website instead of reaching Complainant’s website. Complainant alleges that not only is the disputed domain name confusingly similar to Complainant’s mark, but it also has the appearance of something that might be an advertising campaign for Complainant, making it even more likely that Internet users could become confused. Further, if Internet users accidentally find themselves at Respondent’s website, which it uses to sell bathroom fixtures, Internet users could become confused as to whether Respondent’s website and products are in some way sponsored by Complainant. The Panel finds that Respondent’s use of a confusingly similar domain name to attract Internet users to its website in order to sell bathroom fixtures is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); 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)).
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 <iknowvictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 3, 2006
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