Newvictoriassecret.com

The timeline behind newvictoriassecret.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Victoria's Secret Stores Brand Management, Inc. v. Sushma Narang Claim Number: FA0805001192207 PARTIES Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of McDermott Will & Emery LLP, Washington, D.C. Respondent is Sushma Narang (“Respondent”), India. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <newvictoriassecret.com>, registered with Godaddy.com, Inc. 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. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 21, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 22, 2008. On May 21, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <newvictoriassecret.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 May 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2008 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@newvictoriassecret.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 25, 2008, 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <newvictoriassecret.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 <newvictoriassecret.com> domain name. 3. Respondent registered and used the <newvictoriassecret.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Victoria’s Secret Stores Brand Management, Inc., owns more than 1,300 retail stores in the United States and Canada, which sell women’s apparel, personal care products, swimwear, outerwear, and gift items. Complainant has operated its stores since 1977 under the VICTORIA’S SECRET mark (Reg. No. 1,146,199, issued January 20, 1981), which is registered with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and operates the <victoriassecret.com> domain name in connection with its business, which was registered in 1995. Complainant sold more than $5 billion in merchandise bearing the mark in 2007. Respondent registered the <newvictoriassecret.com> domain name on March 17, 2007. Respondent is currently using the disputed domain name to resolve to a website that features third-party links and advertisements, some of which compete with Complainant. 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 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. Identical and/or Confusingly Similar The Panel finds Complainant has established rights to the VICTORIA’S SECRET mark based upon its trademark registration with the USPTO and use in commerce since 1977. Therefore, the Panel recognizes Complainant’s rights in the VICTORIA’S SECRET mark for the purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006). Respondent registered the <newvictoriassecret.com> domain name on March 17, 2007. (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Respondent’s <newvictoriassecret.com> domain name contains Complainant’s VICTORIA’S SECRET mark in its entirety. The removal of the apostrophe and the space between words along with the addition of the word “new” does not diminish the similarity. The addition of the generic top-level domain (“gTLD”) “.com” is also irrelevant since all domain names require a top-level domain. Therefore, the Panel finds that Respondent’s <newvictoriassecret.com> domain name is confusingly similar to Complainant’s VICTORIA’S SECRET mark pursuant to Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant claims that Respondent has neither rights nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case showing that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <newvictoriassecret.com> domain name. The Panel will examine the record to determine if Complainant has met its burden of proof. 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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). Complainant asserts that Respondent has never been authorized to use the VICTORIA’S SECRET mark, and that Respondent is not and has never been commonly known by the disputed domain name. Further, the WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not commonly known by the <newvictoriassecret.com> domain name 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”). Respondent is using the <newvictoriassecret.com> domain name to advertise links to third-party competitors. The Panel finds that such use 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). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel finds that Complainant has met the initial burden of showing that Respondent lacks rights and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). Based on its findings, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith The Panel finds that Respondent’s use of the <newvictoriassecret.com> domain name to commercially gain by advertising links to competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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). Complainant contends that Respondent is using the <newvictoriassecret.com> domain name for commercial gain by advertising links to competing services, and benefiting from the likely confusion between Complainant’s mark and the disputed domain name. The Panel finds that the similarity between the disputed domain name and the VICTORIA’S SECRET mark are likely to create confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). Complainant alleges that Respondent has actual and constructive notice of Complainant’s business and mark. The Panel finds, based on the screen shots of the website included in the record, that Respondent is aware of Complainant’s business and related marks. The Panel finds that actual or constructive knowledge of a mark prior to registration of the disputed domain name is bad faith registration and use pursuant Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that “[i]n light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time [Respondent] registered the disputed domain name” and such knowledge constituted bad faith). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 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 <newvictoriassecret.com> domain name be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: July 9, 2008 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.