Claim Number: FA0703000945052
PARTIES
Complainant is Victoria's Secret Stores Brand
Management, Inc. (“Complainant”),
represented by Melise R. Blakeslee, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <victoriasfitnesssecret.com>,
registered with Schlund+Partner Ag.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 24, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On March 29, 2007, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <victoriasfitnesssecret.com> domain
name is registered with Schlund+Partner Ag
and that Respondent is the current registrant of the name. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 March 30, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 19, 2007 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@victoriasfitnesssecret.com by e-mail.
A timely Response was received and determined to be complete on April 19, 2007.
A timely Additional Submission from Complainant was received on April
23, 2007 and determined to be complete pursuant to Supplemental Rule 7.
A timely Additional Submission from Respondent
was received on May 1, 2007 and determined to be complete pursuant to
Supplemental Rule 7.
An Additional Submission was submitted by
Complainant on May 2, 2007 and was determined to be deficient. The Panel has not chosen to consider this
Additional Submission in its decision.
An Additional Submission was submitted by Respondent
on May 2, 2007 and was determined to be deficient. The Panel has not chosen to consider this
Additional Submission in its decision.
On April 26, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
The Complaint is based upon
the famous trademark and service mark VICTORIA'S SECRET and variations thereof,
which have been adopted and continually used in commerce by the Complainant,
its licensees, and predecessors since at least as early as June 12, 1977 in
connection with the sale of, inter alia, women's
lingerie, beauty products, swimwear, outerwear, and gift items. Complainant contends that it uses the famous mark
VICTORIA'S SECRET as the name of nearly 1,000 Victoria's Secret retail stores
located throughout the United States which advertise, offer for sale and sell a
wide range of items bearing the mark VICTORIA'S SECRET. Complainant also uses the mark
Complainant’s mark and variations
thereof, are duly registered in the United States Patent and Trademark Office
under sixteen (16) valid, subsisting and uncancelled registrations, and
Complainant is the owner thereof. According to Complainant many of those
registrations are incontestable. Additionally, Complainant has approximately
seventeen (17) applications pending before the United States Patent and
Trademark Office that contain the mark
Complainant’s mark has been prominently used on the
Internet in connection with the world-famous
Complainant contends that the domain name at dispute is confusingly
similar to Complainant’s mark
Complainant further contends that Respondent
registered the Domain Name for the sole purpose of extracting money from
Complainant. Complainant previously
settled a dispute with Respondent last year concerning three infringing domain
names that Respondent had registered in bad faith and used at the time: <victoriasbigsecret.com>, <victoriasfunsecret.com>
and <victoria-secret-fashion-show.com>. Respondent
transferred the domain names and as part of that settlement Respondent
represented that he did not own any other domain names confusingly similar to
the trademark
Finally Complainant contends that Respondent
registered the Domain Name at dispute with the intent to extort money from
Complainant and/or attract Internet users to its website for commercial gain by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website, thereby
misleadingly diverting Internet traffic from Complainant’s website to
Respondent’s for commercial gain. Respondent
has previously registered infringing domain names and benefited from those
registrations. Respondent’s registration
of the <victoriasfitnesssecret.com> domain name demonstrates bad
faith, particularly in view of his awareness that such a domain infringes
Complainant’s rights. Respondent had actual knowledge of
the
Respondent substantially contends that the domain name at dispute is
not confusingly similar or identical to Complainant’s mark. Furthermore Respondent is using the disputed
domain name to operate a website that sells candles, which demonstrates
Respondent’s rights and legitimate interests in the domain name. Respondent admits that Respondent has
previously owned domain names incorporating Complainant’s VICTORA’S SECRET mark
that Respondent has transferred to Complainant. In this regard Respondent contends that the
transfer of these domain names was only for the amount of out-of-pocket
expenses plus one dollar. Finally the
domain name at dispute was not registered and used in bad faith by Respondent.
In Complainant’s reply to Respondent’s Response, Complainant contends
that it is not true that Respondent sold the infringing domain names for “1
dollar each plus out-of-pocket expenses.” In fact, Complainant paid Respondent
approximately $1400 for the domain names <victoriasbigsecret> and
<victoriasfunsecret.com>, which is well in excess of his “out-of-pocket”
expenses. According to Complainant,
Respondent was on notice that Complainant objected to his holding any domain
names incorporating the formative
In its Additional Submission Respondent is basically repeating his
arguments from the Response. However,
Respondent states more precisely that he did sell the domain names for $1.00
each plus expenses. The total cost was
around $1300 for two domain names. Respondent
contends that he did not make any profit on these domain names.
FINDINGS
The Panel finds that:
1.
the Domain Name <victoriasfitnesssecret.com>
is confusingly similar to Complainant’s
mark.
2.
Respondent
has not established any right or legitimate interest in the Domain Name <victoriasfitnesssecret.com
> and
3.
Respondent
has registered and is using the Domain Name <victoriasfitnesssecret.com >
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 asserts rights in the
Further the Panel is of the view that the <victoriasfitnesssecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark under Policy ¶ 4(a)(i), as the disputed domain name contains Complainant’s mark in its entirety, with the addition of the term “fitness” in the middle of the two words of Complainant’s mark. The Panel finds that such an addition does not negate the confusing similarity between Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); 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).
While
Respondent contends that the <victoriasfitnesssecret.com> domain
name is comprised of common terms and as such cannot be found to be identical
or confusingly similar to Complainant’s mark, the Panel finds that such a
determination is not necessary under Policy ¶ 4(a)(i),
as this portion of the Policy considers only whether Complainant has rights in
the trademark and whether the disputed domain name is identical or confusingly
similar to Complainant’s trademark.
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any rights or legitimate interests.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Comms., Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); 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”); 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.”).
Complainant contends that Respondent has no
rights or legitimate interests in the <victoriasfitnesssecret.com> domain name.
Respondent is using the disputed domain name to operate a website that
sells candles, a use which Complainant contends is in direct competition with
its own offering of candles through its retail stores as well as its own
website, located at the <victoriassecret.com> domain name. The Panel is of the view that Respondent’s
use of the <victoriasfitnesssecret.com> domain name to
commercially benefit from the use of Complainant’s VICTORIA’S SECRET mark by
offering competing products is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); see
also Gardens Alive, Inc.
v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using
the name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use).
The Panel also finds that Respondent is not commonly known by the <victoriasfitnesssecret.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name, and Complainant has asserted that Respondent is not authorized to use Complainant’s mark. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent is not commonly known by the <shoredurometer.com> or <shoredurometers.com> domain names where the WHOIS information indicates the registrant of the domain names as “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t,” and no other evidence suggests that the respondent is commonly known by the domain names); 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).
The Panel is of the view that Respondent registered the disputed domain
name for purposes of commercially benefiting from the goodwill associated with
Complainant’s mark by offering goods in competition with those offered by
Complainant. The Panel finds that the <victoriasfitnesssecret.com>
domain name is creating a likelihood of confusion as to the source and
affiliation of Complainant to the disputed domain name and corresponding
website, which illustrates Respondent’s bad faith registration and use of the
domain name under Policy ¶ 4(b)(iv). See 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);
see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv)).
Furthermore the Panel finds that the use of the <victoriasfitnesssecret.com> domain name to operate a website that sells goods in competition with those offered by Complainant constitutes a disruption of Complainant’s business and 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 the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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).
Additionally, the Panel finds
bad faith registration and use under Policy ¶ 4(b)(ii). Complainant asserts, and Respondent admits,
that Respondent has previously owned domain names incorporating Complainant’s
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <victoriasfitnesssecret.com> domain
name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: May 7, 2007
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