Victoria's Secret Stores Brand Management, Inc. v. Diana Abeyta
Claim Number: FA0607000747975
Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, 600 13th Street, N.W., Washington, DC 20005. Respondent is Diana Abeyta (“Respondent”), 1800 S Grove St, 7, Denver, CO 80219.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <victoriaslilsecret.com>, registered with Go Daddy Software, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 12, 2006.
On July 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <victoriaslilsecret.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 7, 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@victoriaslilsecret.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a wholly owned subsidiary of Intimate Brands, Inc., which in turn is a wholly owned subsidiary of Limited Brands, Inc. (collectively “Complainant”).
Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the VICTORIA’S SECRET trademark and service mark, including No. 1,908,042, issued August 1, 1995, and No. 1,935,346 issued November 14, 1995).
Complainant licenses the VICTORIA’S SECRET mark to its subsidiaries, and the mark is used in connection with the sale of women’s lingerie, beauty products, swimwear, apparel, outerwear and gift items.
Complainant employs the VICTORIA’S SECRET mark at over 1,000 stores, as well as in connection with its mail order catalogue and in connection with the website located at the domain name <victoriassecret.com>, which is registered to Complainant.
Respondent is not affiliated with or sponsored by Complainant, and Complainant has not given Respondent permission to use its VICTORIA’S SECRET mark in a domain name.
Respondent registered the <victoriaslilsecret.com> domain name on December 5, 2005.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which features an escort service.
Respondent’s <victoriaslilsecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark.
Respondent does not have any rights or legitimate interests in the domain name <victoriaslilsecret.com>.
Respondent registered and uses the <victoriaslilsecret.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark and 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 same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s rights in the VICTORIA’S SECRET mark are established through registration of the mark with the USPTO. Such registration creates rights in the mark sufficient to meet the requirements of Policy ¶ 4(a)(i). 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 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’s <victoriaslilsecret.com> domain
name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. The disputed domain name includes both of
the terms that make up the mark. The
disputed domain name merely inserts “lil” between those terms. Such an alteration of Complainant’s mark
does not overcome the confusing similarity between the disputed domain name and
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name there in dispute
contained the identical mark of a complainant combined with a generic word or
term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Under the Policy, this assertion constitutes a prima facie case and shifts the burden to Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). By failing to submit a Response, Respondent has offered no evidence or arguments to demonstrate 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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate any rights or legitimate interests in a domain name). The Panel will nonetheless examine the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as outlined in Policy ¶ 4(c).
We begin by observing that Respondent uses the <victoriaslilsecret.com>
domain name to attract Internet users to Respondent’s website, which
features an escort service. That
website includes, among other things, a list of rates. From the listed rates, it may be presumed
that Respondent benefits financially from the website. Such use 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 U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding
that a respondent’s use of a complainant’s mark and the goodwill surrounding
that mark as a means of attracting Internet users to an unrelated business was
not a bona fide offering of goods or services).
Likewise, there is no available evidence to indicate that Respondent is commonly known by the <vicotiraslilsecret.com> domain name. Respondent’s WHOIS information identifies Respondent as “Diana Abeyta,” which has no apparent relationship to the disputed domain name. Complainant asserts that Respondent is not affiliated with or sponsored by Complainant and that Complainant has not given Respondent permission to use Complainant’s VICTORIA’S SECRET mark in a domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (noting that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a 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 a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use the trademarked name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <victoriaslilsecret.com> domain
name is confusingly similar to Complainant’s VICTORIA’S SECRET mark. Internet users seeking Complainant’s goods
at Complainant’s genuine website will likely inadvertently find themselves at
Respondent’s website by entering Complainant’s mark in an Internet search engine. Respondent is thus using the goodwill in
Complainant’s mark to attract Internet users to Respondent’s website offering
escort services, which presumably generate profits for Respondent. Such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp.
v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003)
(stating that “[s]ince the disputed domain names contain entire versions of
Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names there in issue were registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name there
in question was obviously connected with a complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain).
Moreover, it is evident that Respondent registered the
contested domain name with actual or constructive knowledge of Complainant’s
rights in the VICTORIA’S SECRET mark by virtue of Complainant’s prior
registrations of its mark with the USPTO.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <victoriaslilsecret.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 23, 2006
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