The Complainant is Victoria’s Secret Stores Brand Management, Inc. of Columbus, Ohio, United States of America (“United States”), represented by Burges Salmon LLP, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Maria Rosana dos Santos / Maria Dos Santos of London, United Kingdom, self-represented.
The disputed domain name <victoriasecretnails.com> (“Disputed Domain Name”) is registered with 1&1 Internet SE (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2017. On June 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2017. On June 21, 2017, the Respondent submitted two emails indicating that she has received a hard copy of the Complaint, and providing her contact information. The Response was filed with the Center on July 6, 2017.
The Center appointed John Swinson as the sole panelist in this matter on July 11, 2017. 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.
On July 11, 2017 the Complainant sent an email communication to the Center containing a supplemental filing. The Center forwarded the supplemental filing to the Panel on July 13, 2017.
The Complainant is a leading retail company based in the United States which is well known internationally for its intimate apparel, loungewear and cosmetic products including beauty and body care products. Founded in 1977, the Complainant operates over 1,500 stores worldwide, and online at the website “www.victoriassecret.com”. A number of these stores are dedicated beauty and accessories stores.
The Complainant launched its first store in the United Kingdom in 2005 and currently operates 23 stores across the United Kingdom including in London, where the Respondent’s business is based.
The Complainant is the owner of a number of trade mark registrations, including:
- United Kingdom trade mark registration number UK00001257678 for VICTORIA’S SECRET which was registered on January 17, 1990, including in respect of soaps, shampoos, perfumes, and cosmetics; and
- European Union trade mark registration number EU013000121 for the stylized VS VICTORIA’S SECRET logo which was registered on November 7, 2014, including in respect of online retail store services in the field of cosmetics and personal care products,
(the “Trade Mark”).
The Complainant owns approximately 1,650 domain names incorporating the Trade Mark.
The Respondent runs a small business called Victoria Secret Beauty which provides beauty treatments including manicures, pedicures, waxing, facials and massage.
The Respondent’s business started as a mobile beauty service known as Mobile Beauty Care in 2011. Later that year the business moved to a building located at 207 Victoria Street, Victoria in London, and from that time was referred to as Victoria Street Nails. In 2014, the business as renamed Victoria Secret Nails and following that, Victoria Secret Beauty.
The Disputed Domain Name was registered on March 12, 2014. The Disputed Domain Name currently resolves to a website at <victoriasecretbeauty.co.uk>, which is also registered to the Respondent.
The Complainant states that it first became aware of the Disputed Domain Name, the Respondent’s business activities, and the fact the Respondent was using a logo very similar to the Complainant’s stylized VS logo on its pricelist (the “Respondent VS Logo”) in May 2016. On June 7, 2016, the Complainant, through its solicitors, wrote to the Respondent requesting that she ceases operating her business under the name Victoria Secret Beauty, cease using the Respondent VS Logo, and transfer the Disputed Domain Name (and domain name <victoriasecretbeauty.co.uk>) to the Complainant.
The Respondent replied on June 24, 2016, indicating that she would be amenable to changing the Respondent VS Logo (with financial assistance from the Complainant), but denying that the Disputed Domain Name was registered in bad faith and refusing the transfer the Disputed Domain Name. The Respondent stated that she was happy to “consider a commercial resolution under a licensing agreement” in relation to the Disputed Domain Name.
On July 20, 2016, the Complainant’s solicitors wrote to the Respondent and offered USD 2,500 plus reasonable expenses in exchange for the Respondent’s agreement to change her business name and transfer the Disputed Domain Name to the Complainant.
On August 21, 2016, the Respondent rejected the Complainant’s offer, describing it as “paltry”.
The Complainant has provided evidence of this exchange of correspondence (along with other correspondence which the Panel does not refer to in this decision).
The Complainant states that, on March 21, 2017, the Respondent had applied to register VICTORIA SECRET BEAUTY as a trade mark in the United Kingdom. The Complainant opposed this application.
Identical or confusingly similar
The Complainant submits that the Disputed Domain Name is identical or confusingly similar to the Complainant’s Trade Mark. The only differences between the Disputed Domain Name and the Trade Mark are the deletion of the apostrophe and letter “s” following the word “Victoria”; the addition of the purely descriptive word “nails” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
Rights or legitimate interests
The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to, and legitimate interests in, the Disputed Domain Name. The Complainant makes the following submissions:
(a) the Complainant has not licensed or authorized the Respondent to use its Trade Mark;
(b) the Respondent does not have a legitimate right to use the Trade Mark in the Disputed Domain Name;
(c) the Respondent was aware of the Complainant’s well-known brand when she registered the Disputed Domain Name; and
(d) the Respondent has not provided any legitimate explanation for choosing to combine “Victoria” with “Secret” in the Disputed Domain Name.
Registration and use in bad faith
The Complainant submits that the Disputed Domain Name was registered and is being used by the Respondent in bad faith as the Respondent:
(a) knew of the Complainant’s brand and registered the Disputed Domain Name primarily for the purpose of disrupting the business of the Complainant; and
(b) by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location.
Identical of Confusingly Similar
The Respondent argues that while there may be similarities between “Victoria Secret” and “Victoria’s Secret”, they are not confusingly similar to Internet users as there is no correlation between the products offered by the Respondent and the Complainant. The Respondent also submits that the addition of the descriptive word “nails” as well as the gTLD “.com” is enough to alleviate any potential confusion.
The Respondent submits that she was forced to rebrand her business from “Victoria Street Nails” in 2014 following the “hacking” of her business website. The Respondent provided the following explanation as to how each word of the business name and Disputed Domain Name was chosen:
“Victoria: a name based on location, Victoria Underground Station, Victoria Street, Victoria district part of Westminster, London.
207 Victoria Street faces the back entrance of Buckingham Palace and as a noun which describes Victory or “Victoria” in Portuguese or in Spanish, “my mother tongue languages” representing, ideas, beliefs, typical of the Victorian era which emphasised beliefs, morality, religious adherence and the importance of family life.
Secret: 207 Victoria Street is difficult to find, or hidden, or unknown as well a noun or adjective describing a thing or place.
The primary intimate services and waxing are provided around the “secret” urogenital region.
Nails: the word searching to best describe on Google searching for sail salon for services related to manicure and pedicure.
Beauty: which is related to a noun to describe a quality of a thing or service.”
Rights or Legitimate Interests
The Respondent submits that she had the right to register the Disputed Domain Name as it was available and because the Complainant, who owns approximately 1650 domain names, had not registered it.
The Respondent argues that she has a legitimate interest in the Disputed Domain Name given her business specializes in the provision of nail and beauty services and she is actively using the website to promote her business. The Respondent maintains that the Complainant is not well-known for services related to the beauty industry.
Registered and Used in Bad Faith
The Respondent submits that she was not aware of the Complainant’s offering of beauty products when registering the Disputed Domain Name. The Respondent argues that the Disputed Domain Name was registered following the rebranding of her business and that the Disputed Domain Name was chosen to reflect the new name of her business. The Disputed Domain Name redirects to the website “ www.victoriasecretbeauty.co.uk” which is currently being used to promote the Respondent’s business.
The Respondent addresses the fact that there had been prior communications between the Parties and that she was informed of the Complainant’s issues ahead of them initiating proceedings with the Center. The Respondent denies bad faith and contends that this is a “David and Goliath” type situation.
To succeed, the Complainant must prove that each of the elements provided in paragraph 4(a) of the Policy have been met. These include:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has provided a supplemental filing in these proceedings. Paragraph 10 of the Rules grants the panel sole discretion to determine the admissibility of supplemental filings received from either party.
The Panel considers that this supplemental filing does not contain sufficient new or previously unavailable information that would incline the Panel to accept the supplemental filing as part of the record in this proceeding.
Accordingly, the Panel declines to accept the supplemental filing.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark for the following reasons.
The deletion of the apostrophe and letter “s” in the Disputed Domain Name is a minor alteration as compared with the Trade Mark. See Victoria’s Secret Stores Brand Management, Inc., Victoria’s Secret Stores, LLC, and Victoria’s Secret Direct, LLC v. Sharon Brown and Kenneth Brown, WIPO Case No. D2006-0556.
The addition of the descriptive word “nails” does not detract from the identical or confusingly similar nature of the Disputed Domain Name. “Victoria Secret” is the dominant part of the Disputed Domain Name.
The addition of the gTLD suffix “.com” is generally to be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Networks, Inc. v Emil Boc, WIPO Case No. D2009-1535.
For the above mentioned reasons, the Complainant is successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made out a prima facie case. This decision has been reached after consideration of the following facts:
- The Panel accepts that the Respondent’s use of the Disputed Domain Name is unauthorized and without permission from the Complainant.
- There is no evidence to suggest the Respondent is making, or has ever made, any noncommercial use of the Disputed Domain Name.
The Respondent submits that she had the right to register the Disputed Domain Name as it was available, and that she has a legitimate interest in the Disputed Domain Name given her business specializes in the provision of nail and beauty services.
Merely because a domain name is available to be registered does not give a person who registers it rights or legitimate interests in that domain name.
While the Respondent is using the Disputed Domain Name in connection with her business, the Respondent selected the business name and registered the Disputed Domain Name long after the Complainant began operating (and had registered trade mark rights) in the United Kingdom. The Panel does not accept the Respondent’s explanation as to why she selected a business name which wholly incorporates a world-famous brand, and considers it more likely that she did so with the intention of trading off the Complainant’s reputation in the Trade Mark. Such use is not legitimate.
The Respondent’s submissions are not sufficient to rebut prima facie case established by the Complainant, and the Panel finds that the Respondent does not have any rights to or legitimate interests in the Disputed Domain Name.
The Complainant succeeds on the second element of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
The Complainant’s brand is very well-known internationally having been trading since 1970 and enjoying considerable worldwide publicity. A core part of the Complainant’s business is selling cosmetics, which include nail polishes. The Complainant’s registration of the Trade Marks predates the registration of the Disputed Domain Name by over 20 years. In addition, the Complainant has been operating in the United Kingdom since 2005, which again predates the registration of the Disputed Domain Name.
The Panel does not accept the Respondent’s explanation as to how the business came to be referred to as either “Victoria Secret Nails” or “Victoria Secret Beauty”. Having reviewed the earlier correspondence between the Parties (annexed to the Complaint) the Respondent’s connection with the word “Victoria” is plausible, but the explanation as to why she chose to include the word “secret” is not plausible. The Respondent goes so far as to suggest other business names being considered which included the word “hidden” instead of “secret”. There seems little reason – other than to capitalise on the fame and goodwill of the Complainant – that the Respondent would have chosen the word “secret” over “hidden” or other similar adjectives.
The Panel believes it is highly probable that the Respondent was aware of the Complainant’s business when she registered the Disputed Domain Name. As stated by the panel in Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, “since the Complainant’s trademark is well-known throughout the world, it is very unlikely, if not nearly impossible, that, when the Respondent registered the Domain Name, she was not aware that it was infringing on the Complainant’s trademark rights”.
On this basis, the Panel finds that the Disputed Domain Name was registered in bad faith.
The Panel finds that the Respondent registered and was using the Disputed Domain Name in an intentional attempt to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location. This is evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
For the reasons listed above, the Panel finds that the Complainant has succeeded on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <victoriasecretnails.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: July 25, 2017