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and Mediation Center
Victoria’s Secret Stores Brand Management, Inc., Victoria’s
Secret Stores, LLC, and Victoria’s Secret Direct, LLC v. Sharon Brown
and Kenneth Brown
Case No. D2006-0556
1. The Parties
Complainants are Victoria’s Secret Stores Brand Management, Inc., Reynoldsburg, Ohio, United States of America; Victoria’s Secret Stores, LLC, Reynoldsburg, Ohio, United States of America; and Victoria’s Secret Direct, LLC, Columbus, Ohio, United States of America, represented by Colucci & Umans, United States of America.
Respondents are Sharon Brown and Kenneth Brown, Middle Grove, New York, United
States of America.
2. The Domain Names and Registrars
The disputed domain names <victoriashotsecret.biz>, <victoriashotsecret.info>,
<victoriashotsecret.net>, and <victoriashotsecret.org> are registered
with eNom. The disputed domain name <victoriashotsecret.com> is registered
with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2006. On May 4, 2006, the Center transmitted by email to eNom and Dotster, Inc. a request for registrar verifications in connection with the domain names at issue. On May 4, 2006, eNom and Dotster, Inc. transmitted by email to the Center their verification responses confirming that Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on May 8, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on May 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2006. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 6, 2006.
The Center appointed Andrew Mansfield as the sole
panelist in this matter on June 14, 2006. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Complainants own and operate approximately 1,500 Victoria’s
Secret and Victoria’s Secret Beauty retail stores throughout the United
States. Since December, 1998, Complainants have operated a commercial Internet
website <victoriassecret.com>. Complainants own the following United States
Trademark Registration Numbers: 1,146,199; 1,908,042; 1,935,346; and 2,455,260.
These registrations concern the trademark VICTORIA’S SECRET and apply
to various goods and services, including clothing, lingerie, swimwear, accessories,
candles, and personal care products. Complainants also own registrations and/or
applications to register the trademark and service mark VICTORIA’S SECRET
in over 120 nations.
5. Parties’ Contentions
Complainants assert that their trademark VICTORIA’S SECRET is so famous in the United States it is synonymous with lingerie and intimate apparel. Beginning with four stores in San Francisco in 1977, Complainants have invested in the VICTORIA’S SECRET trademark so as to now operate approximately 1,500 Victoria’s Secret and Victoria’s Secret Beauty retail stores throughout the United States. Complainants own and operate a commercial Internet website at www.victoriassecret.com and have done so since December of 1998.
Complainants assert that the VICTORIA’S SECRET trademark has acquired significant good will, wide public recognition, and fame. In support of this proposition, Complainants state that Complainants’ retail store, catalog, and website sales conducted under the VICTORIA’S SECRET trademark exceeded US $4 billion in fiscal year 2005.
Complainants argue that Respondents’ domain names <victoriashotsecret.com>, <victoriashotsecret.org>, <victoriashotsecret.info>, <victoriashotsecret.net>, and <victoriashotsecret.biz> (hereinafter collectively referred to as “the Domain Names”) are confusingly similar to Complainants’ trademark, VICTORIA’S SECRET. Complainants base the claim of confusing similarity on the assertion that the addition of a generic word (in this case, “hot”) to a trademark does not reduce the likelihood of confusion between the trademark and domain names so modified.
Complainants argue that Respondents have no rights or legitimate interests in respect to the domain name. Respondents registered the first of the Domain Names approximately 30 years after Complainant began using the VICTORIA’S SECRET trademark. When they registered the Domain Names, there is no doubt, according to Complainants, that they knew of Complainants’ trademark rights to VICTORIA’S SECRET. According to Complainants’ records, Respondents have received 241 Victoria’s Secret catalogs since 1991 and purchased over $3,000 worth of merchandise from Complainants during the last fifteen years. Respondents live within twenty-five miles of three of Complainants’ retail stores.
Since 2005, Complainants inform the Panel, Respondents have offered lingerie, eveningwear, shoes, and intimate apparel at <victoriashotsecret.com>. None of the other Domain Names currently resolve to a functioning website.
Finally, Complainants assert that the Domain Names were registered and are being used in bad faith. Complainants argue that Respondents purposefully chose to establish a lingerie business at <victoriashotsecret.com> to trade off the fame and good will of the VICTORIA’S SECRET trademark and to attract users to their website. The other Domain Names were registered after counsel for Complainants contacted Respondents, further indicating bad faith.
Complainants ask that the Domain Names be transferred to them.
Respondents did not reply to Complainants’ contentions.
6. Discussion and Findings
In order to succeed in their Complaint, Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used by Respondents in bad faith.
Even when a respondent defaults, as is the case here, the complainant must
establish and carry the burden of proof on each of the three elements identified
above with regard to each of the disputed domain names. See Brooke Bollea,
a.k.a Brooke Hogan v. Robert McGowan, WIPO
Case No. D2004-0383.
As a preliminary point the Panel notes that this case involves multiple complainants and respondents. According to the Complaint, Victoria’s Secret Stores Brand Management, Inc. is the owner of the VICTORIA’S SECRET trademark and licenses that trademark to Victoria’s Secret Stores, LLC for use in connection with its retail stores and to Victoria’s Secret Direct, LLC, which is the owner of the Victoria’s Secret catalog and the domain name <victoriassecret.com>. The Panel therefore accepts the bringing of the Complaint by all three Complainants. Sharon Brown is the registrant of record of the domain name <victoriashotsecret.com> and Kenneth Brown is the registrant of record of the domain names <victoriashotsecret.org>, <victoriashotsecret.info>, <victoriashotsecret.biz> and <victoriashotsecret.net>. Respondents are recorded in the respective registrars’ Whois databases as having the same contact details. The Panel therefore accepts the Complainants’ argument that Respondents are married or otherwise related and jointly control the disputed domain names and allows the Complaint to be brought against both Respondents.
A. Identical or Confusingly Similar
The possession of U.S. federally registered trademark rights by Complainants
meets the threshold requirement of possessing trademark rights sufficient to
satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano
Reggiano v. La casa del Latte di Bibulic Adriano, WIPO
Case No. D2003-0661.
In reviewing whether each of the Domain Names is identical or confusingly similar
to a trademark or service mark in which Complainants have rights, the Panel
is mindful of the fact that common words in the Domain Names should be eliminated
for purposes of the comparison. See, e.g., PepsiCo, Inc. v. PEPSI, SRL
(a/k/a P.E.P.S.I.), WIPO Case No. D2003-0696. In addition, generic terms,
occurring within a domain name in conjunction with a trademark, should not be
considered for purposes of comparison. Dr. Ing. h.c. F. Porsche AG v. Vasiliy
Terkin, WIPO Case No. D2003-0888.
Although five domain names (one each in five top-level domains) are the subject of this Complaint, the important portion of each domain name for purposes of assessing whether they are identical or confusingly similar to Complainants’ trademarks is the same in each. That portion identical in each is VICTORIASHOTSECRET. This grouping of letters or phrase is identical to Complainants’ trademark VICTORIA’S SECRET but for the lack of the apostrophe, a space (a character that cannot be made part of a domain name) and the word “hot.” For purposes of comparison, then, the Panel drops the apostrophe, the space, and the word hot. Of course, the top-level domain identifiers do not play a role in the comparison. The relevant comparison to be made is with the second-level portion of the Domain Names only, as it is well-established that the top-level domain (i.e., “.com”) should be disregarded for this purpose. See, e.g., United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).
Applying these principles, the Panel therefore compares VICTORIASSECRET to VICTORIASECRET. These letter combinations are identical, except for the second “s” in Complainants’ trademark. Complainants have satisfied paragraph 4(a)(i) of the Policy in that the Domain Names are confusingly similar to Complainants’ trademark.
B. Rights or Legitimate Interests
Complainants presented evidence that Respondents registered and began to operate a commercial website at <victoriashotsecret.com> in 2005. By comparison, Complainants have used the trademark VICTORIA’S SECRET in commerce since 1977 and have possessed a United States registration for that trademark since 1981. Respondents defaulted and presented no evidence that they may have been in business under the name VICTORIA’S HOT SECRET prior to 1977. The Panel infers that Respondents are incapable of producing such evidence from their default.
Complainants have made out an initial prima facie case that Respondents lack rights or legitimate interests in the Domain Names. Once such a prima facie case is made, Respondents carry the burden of demonstrating rights or legitimate interests in the Domain Names. By matter of default, Respondents have failed to do so, and Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Respondents have sought to benefit from the confusion between the Domain Names and Complainants’ trademark in VICTORIA’S SECRET. Respondents conduct is similar to the example provided in Paragraph 4(b)(iv) of the Policy.
Respondents’ bad faith is indicated by the fact that they received several hundred catalogs prominently bearing the trademark VICTORIA’S SECRET prior to registering the Domain Names. In addition, Respondents purchased approximately US $3,000 worth of merchandise from Complainants. That merchandise was branded with Complainants’ trademark VICTORIA’S SECRET. There is no doubt that Respondents were aware of Complainants’ trademark at the time they registered each of the Domain Names.
The finding of bad faith is further strengthened by the fact that Respondents
registered four additional domain names in different top-level directories after
being contacted by counsel for Complainants.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders, as requested, that the domain names <victoriashotsecret.com>, <victoriashotsecret.org>, <victoriashotsecret.info>, <victoriashotsecret.net>, and <victoriashotsecret.biz> be transferred to Complainant Victoria’s Secret Stores Brand Management, Inc.
Date: June 28, 2006