Решение The National Arbitration Forum относительно домена victoriasecrete.com, 2001 Victoria's Secret et al v Personal

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THE NATIONAL ARBITRATION FORUM

 

DECISION

Victoria's Secret et al v Personal

Claim Number: FA0101000096491

PARTIES

 

The Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. The Respondent is Personal, Moscow, RUSSIA ("Respondent").

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is "victoriasecrete.com" registered with Bulkregister.

 

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 a panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 23, 2001; the Forum received a hard copy of the Complaint on January 23, 2001.

On January 24, 2001, Bulkregister confirmed by e-mail to the Forum that the domain name "victoriasecrete.com" is registered with Bulkregister and that the Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNТs Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 2001 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 RespondentТs registration as technical, administrative and billing contacts, and to postmaster@victoriasecrete.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 21, 2001, pursuant to ComplainantТs request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 ForumТs Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

RELIEF SOUGHT

The Complainants request that the domain name be transferred from the Respondent to the Complainants.

PARTIESТ CONTENTIONS

1.  
2. Complainants

Respondent's registered domain name, "victoriasecrete.com", is confusingly similar to the Complainants' mark VICTORIA'S SECRET and the domain name used by Complainants in connection with the legitimate sale of products bearing the mark VICTORIA'S SECRET, namely "victoriassecret.com". Respondent's Domain Name creates a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product on its web site, and is likely to misleadingly divert web surfers trying to locate the legitimate VICTORIA'S SECRET web site.

When a web user attempts to locate the VICTORIA'S SECRET web site, often the individual will attempt to enter the name as a search term on a search engine site. On a typical day, Complainants get at least 5-10,000 web users coming to their official site from a search engine. Up to 25% of users, however, misspell the VICTORIA'S SECRET trademark when attempting to enter the Complainants' Mark as a search string.

Furthermore, thousands of customers attempt to key the Complainants' URL into their web browser each day, and keying errors or the incorrect spelling of the Complainants' Mark may take customers to other sites which intentionally use similar names to direct customers to their sites.

The mark VICTORIA'S SECRET is duly registered in the United States Patent and Trademark Office under seventeen valid, subsisting, and uncancelled registrations, and V Secret Catalogue, Inc. is the owner thereof. Many of these registrations are incontestable. Additionally, Complainant has approximately twenty applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA'S SECRET and variations thereof.

RespondentТs Domain Name is nearly identical to the ComplainantsТ mark.

Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.

Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization.

Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

Despite ComplainantsТ repeated requests, to date Respondent has failed to articulate any rights or legal interest they have in the Domain Name, nor is it possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.

Respondent's conduct also demonstrates an intent to attract Internet users to their web site by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of his web site.

B. Respondent

The Respondent has not disputed the contentions addressed in the Complaint.

FINDINGS

The VICTORIA'S SECRET trademarks and service marks have been adopted and continually used in commerce by the Complainants and predecessors since June 12, 1977 in connection with the sale of, inter alia, women's lingerie, beauty products, outerwear, and gift items.

Complainants use the famous mark VICTORIA'S SECRET as the name of its over 800 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. Complainants also use the mark VICTORIA'S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainants' web site, located at "victoriassecret.com".

In 1999, $2.94 billion of merchandise was sold bearing or in connection with the mark VICTORIA'S SECRET.

The mark VICTORIA'S SECRET is prominently used on the Internet in connection with the Victoria's Secret online fashion shows. In February 1999, Complainants launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was surpassed on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the VictoriaТs Secret Internet fashion show, which prominently featured the mark VICTORIAТS SECRET.

The Respondent registered the "victoriasecrete.com" domain name on February 4, 2000.

On October 17, 2000, Respondent was using the domain name to route web users to "bestoftheweb.com". As of December 18, 2000, Respondent was using the domain name to route web users to "centerfind.com". At various times the domain name has also been used to route web users to "casino-on-net.com".

Complainants sent Respondent a cease and desist letter via e-mail and certified mail dated November 27, 2000, informing Respondent that the domain name infringes upon Complainants' trademark rights and requesting that Respondent assign the domain name to Complainants. To date, Respondent has failed to respond to Complainants' requests and continues to control the domain name.

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The "victoriasecrete.com" domain name is essentially the misspelling of ComplainantsТ VICTORIAТS SECRET mark. The deletion of the letter "s" or the inclusion of the letter "e" does not circumvent the ComplainantsТ rights in the mark nor avoid the confusing similarity aspect under Policy 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the ComplainantТs UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the ComplainantТs mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name "statfarm.com" is confusingly similar to the ComplainantТs mark "State Farm"); see also Victoria's Secret et al

v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding "victoriasecerets.com", "victoriasecretes.com", "victoreasecret.com", "victoriasecerts.com" and other variations thereof are confusingly similar to VICTORIA'S SECRET).

Rights or Legitimate Interests

Respondent has not demonstrated any rights to the domain names in question. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

Redirecting the domain name to an advertisement does not constitute a bona fide offering of goods and services under Policy 4(c)(i) nor is it a noncommercial or fair use of the domain name under Policy 4(c)(iii). Kosmea Pty Ltd. v. Carmel Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where the Respondent has an intention to divert consumers of the ComplainantТs products to the RespondentТs site by using the ComplainantТs mark).

Respondent has also not shown that it is known by the "victoriasecretes.com" domain name as required under Policy 4(c)(ii).

Therefore, Respondent has no rights or legitimate interests in the domain name. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by ComplainantТs marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Registration and Use in Bad Faith

Because of the popularity of ComplainantsТ goods and the famousness of their marks, it may be assumed that the Respondent had notice of ComplainantsТ marks at the time of the domain name registration. The domain name in question is so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the Respondent had actual and constructive knowledge of the ComplainantТs EXXON mark given the world-wide prominence of the mark and thus the Respondent registered the domain name in bad faith).

Respondent further shows bad faith by redirecting the domain name to advertisements. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name "victoriasecrete.com" be transferred from Respondent to Complainants.

 

Hon. James A. Carmody, Panelist

 

Dated: February 27, 2001