WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Victoria’s Secret Stores Brand Management, Inc. v. Gillian Dowling, Gillian’s Beauty Clinic

Case No. DIE2017-0002

1. The Parties

The Complainant is Victoria’s Secret Stores Brand Management, Inc. of Columbus, Ohio, United States of America, represented by A&L Goodbody Partners, Ireland.

The Respondent is Gillian Dowling, Gillian’s Beauty Clinic of Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <victoriassecret.ie> is registered with IE Domain Registry Limited (“IEDR”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2017 via email and in hardcopy on August 7, 2017. On August 3, 2017, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On the same date, IEDR transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.

The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on August 14, 2017. In accordance with the Rules, paragraph 5.1, the due date for Response was September 11, 2017.

At request of the Complainant, the proceedings were suspended on September 8, 2017, and reinstituted on October 4, 2017. The new due date for Response after reinstitution of the proceedings was October 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2017.

The Center appointed Yvonne McNamara as the sole panelist in this matter on October 24, 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.

4. Factual Background

A. The Complainant

The Complainant is a retailer of women’s underwear, sleepwear, beauty products and perfumes under the mark VICTORIA’S SECRET.

It was founded in 1977 in California and is now a Delaware company and subsidiary of L Brands, Inc. which is a publicly traded company.

The Complainant indicates that it operates over 1,500 VICTORIA’S SECRET shops worldwide, that it opened its first concession in Ireland in 2013 in Terminal 2, Dublin Airport, will open a flagship shop on Grafton Street this year and that it also trades from its website at “www.victoriassecret.com”. The Complainant indicates that its total online and catalogue sales of VICTORIA’S SECRET products in Ireland in 2016 amounted to USD 1,081,573.

In its pre-Complaint letter to the Respondent of December 15, 2016, the Complainant pointed to a trend of increasing sales of VICTORIA’S SECRET products in Ireland – indicating that they had increased in value from EUR 104,844 in 2002 to EUR 669,056 in 2016, with the figure amounting to USD 536,560 in 2009 – the year of the registration of the disputed domain name.

The Complainant claims a global reputation and goodwill in the business run under the VICTORIA’S SECRET mark, indicating that total global sales under the brand amounted to USD 1,198,396,704. It points to a viewership of 10 million viewers worldwide of the VICTORIA’S SECRET Fashion Show in 2009 and to a description in Forbes Magazine of the 2015 fashion show as “the most-watched fashion event on the planet”.

As part of an international portfolio of registered trade marks comprising the words “Victoria’s Secret”, the Complainant owns three Irish registered trade marks as follows:

(1) Irish trade mark registration number 108780 VICTORIA’S SECRET for clothing in class 25 (registered on June 22, 1983);

(2) Irish trade mark registration number 108779 VICTORIA’S SECRET for printed publications in class 16 (registered on June 22, 1983);

(3) Irish trade mark registration number 215083 VICTORIA’S SECRET broadly for cosmetics and perfumes in class 3 (registered on September 29, 1999)

The Complainant indicates that it owns approximately 1,650 domain names incorporating the VICTORIA’ S SECRET mark, including for example <victoriassecret.com> which was registered on January 23, 1995.

B. The Respondent

From the materials available, the Respondent is a sole trader who runs a beauty shop in Dublin.

The WhoIs search facility indicates that the Respondent registered the disputed domain name on November 30, 2009.

The Complainant filed evidence of the disputed domain name resolving to a webpage displaying an error message and further evidence of the disputed domain name resolving, at a later date, to the webpage of a business called “Register 365” at “www.register365.com/parked-domains/index?/=/domainlvictoriassecret.ie”. Register 365 appears to be a business offering services in connection with domain names, establishing a web-presence, hosting for those purposes, and so on.

The words “Victoria’s Secret” were registered by the Respondent as a business name on April 25, 2002 in respect of “lingerie distribution wholesale and retail”. The Complainant indicated that an agent visited the given address for the registered business on its behalf and found that the business operating from it is a business called “Gillian’s Beauty Clinic” and that there was no visible reference to any branding with the VICTORIA’S SECRET mark.

While the Respondent made no formal reply to the Complaint, she did engage to some extent in pre-Complaint correspondence initiated by the Complainant’s solicitors, accepting (by email of February 17, 2017) that she had registered “Victoria’s Secret” as a business name on April 25, 2002 and that she had registered the domain name <victoriassecret.ie> on the basis that it “best reflected this business name”. She further indicated in her email that “At the time of registration I am not aware of any trading or reputation held by Victoria’s Secret in the Republic of Ireland”.

The Respondent also asserted that the registration of the disputed domain name in 2009 was not the first registration by her of the words “Victoria’s Secret” as part of a domain name, that the 2009 registration comprised “re registration after a short lapse” and that the “original date of registering the domain name was many years earlier”. A slightly earlier response of February 10, 2017, made on behalf of the Respondent by her agents asserted that the earlier domain name registration existed on January 19, 2004 but no documentary evidence was supplied.

The pre-Complaint correspondence initiated by the Complainant’s solicitors had included a form of letter addressed to the IEDR authorising the transfer of the disputed domain name to the Complainant as well as a business name cancellation form specifying cancellation of the “Victoria’s Secret” business name. There was no response by the beginning of August 2017 and the Complainant filed the Complaint on August 3, 2017. The Respondent then completed and signed the transfer authorisation and business name cancellation and returned them to the Complainant on August 24, 2017. This has not however resolved the matter – presumably, although it has not been stated, as a result of clause 8 of the IEDR Policy which prohibits transfers of domain names while an administrative proceeding regarding the name in question is pending.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use in Ireland of the VICTORIA’S SECRET mark as the “protected identifier”on the basis of which it makes this Complaint.

It contends that having regard to the fact that the disputed domain name incorporates the entirety of the VICTORIA’S SECRET mark, with the subtraction only of elements that cannot form part of a domain name (namely the apostrophe and the space between the two words comprising the mark) and the addition only of a country-code Top-Level Domain (“ccTLD”), namely “.ie”, the disputed domain name is identical or misleadingly similar to the Complainant’s marks.

The Complainant’s case is that the Respondent has no rights in law or legitimate interests in respect of the disputed domain name in circumstances where the business name relied upon by the Respondent, at least in pre-Complaint correspondence, as the anchor for the disputed domain name, does not confer any exclusive right to use the name under Irish law and where, in the Complainant’s case the Respondent chose the business name by reference to the Complainant’s VICTORIA’S SECRET business. The Complainant points to the absence of any explanation from the Respondent of the choice of the name and to the geographically qualified nature of the Respondent’s statement in respect of her awareness of the VICTORIA’S SECRET business, namely that she was not aware of any “trading or reputation held by Victoria’s secret in the Republic of Ireland”.

The Complainant confirms that it has not given the Respondent any permission or licence to use the VICTORIA’S SECRET mark and points to the absence of any such use on the part of the Respondent.

The Complainant says that the registration of the disputed domain name was in bad faith in circumstances, essentially, where the Complainant contends that it is inconceivable that the Respondent was not aware of the Complainant’s brand and business at the time of registration of the disputed domain name. The Complainant believes that the Respondent registered the disputed domain name primarily for the purpose of preventing the Complainant from itself registering a domain name in the “.ie” ccTLD incorporating its own VICTORIA’S SECRET mark.

B. Respondent

As indicated the Respondent made no formal response to the Complaint.

The pre-Complaint correspondence forthcoming from, and on behalf of, the Respondent appeared to argue registration of the disputed domain name as being legitimately reflective of the registration in 2002 of “Victoria’s Secret” as a business name in circumstances where the Respondent indicated that “At the time of registration I am not aware of any trading or reputation held by Victoria’s secret in the Republic of Ireland.”

The provision by the Respondent of a mandate addressed to the IEDR to assign the disputed domain name to the Complainant shortly after the Notification of the Complaint by the Center, the signed cancellation of the “VICTORIA’S SECRET” business name provided at the same time and the absence of any formal response to the Complaint, appear to indicate that the Respondent is no longer standing behind her registration of the disputed domain name.

6. Discussion and Findings

The IEDR Policy prescribes the elements of a justified complaint in respect of a domain name as follows:

(a) A domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; and

(b) The Respondent has no rights in law or legitimate interests in respect of a domain name; and

(c) A domain name has been registered or is being used in bad faith.

The consensus view drawn from the decisions of Uniform Domain Name Dispute Resolution Policy (“UDRP”)¹ panels (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) at section 4.3 is that a respondent’s default in responding to a complaint in a particular case does not automatically result in a decision in favour of the complainant in the case. While under paragraph 13.2 of the Rules, a panel may draw appropriate inferences from a respondent’s default in this regard, the complainant in such circumstances must still satisfy the panel that the three elements required under the policy in question – whether the UDRP or the IEDR Policy – have been met.

The provision by the Respondent in this case of a completed domain name transfer request and business name cancellation documentation stands in support of the inference that may normally fall to be drawn in the case of a respondent declining to answer a complaint.

In circumstances however where the Respondent in this case has not engaged in response to the Complaint to make her position on the three elements of the Complaint clear and in circumstances where the Respondent started in pre-Complaint correspondence by justifying her registration of the disputed domain name, the Panel will consider each of the elements of the IEDR Policy in light of all the relevant facts.

A. Identical or confusingly similar protected identifier

The first element to be established by a complainant is that it has rights in a protected identifier to which the domain name is identical or misleadingly similar.

Paragraph 1.3 of the IEDR Policy provides:

“Protected identifiers for the purposes of this Policy are:

1.3.1. Trade and service marks protected in the island of Ireland.

1.3.2. Personal names (including pseudonyms) in which the Complainant has acquired a reputation in the island of Ireland.

1.3.3. Geographical indications that can prima facie be protected in the island of Ireland…”

Clearly the Complainant’s registrations in Ireland of the VICTORIA’S SECRET mark comprise protected identifiers under paragraph 1.3.1 of the IEDR Policy. The Panel notes that these registered rights date from 1983.

In Ireland the VICTORIA’S SECRET business is fairly substantial and has grown in recent years from a relatively small base. It is a very substantial business internationally however and has been for quite some time. The manner in which certain brands, particularly those with a particular type of celebrity attached, such as the VICTORIA’S SECRET brand, can become known in a particular jurisdiction even before a substantial business within the State is established, is a matter of common knowledge and something that the Panel takes judicial notice of. This is a factor that becomes relevant in the analysis of the second and third elements of the Complaint.

As regards, unregistered rights in the VICTORIA’S SECRET mark, the Complainant does not say when the first online or catalog sales in the State took place but the Panel finds that as and from those sales and due to its existing international reputation, the business run under the VICTORIA’S SECRET mark has benefitted from the kind of goodwill that can ground a passing-off action in the State.

In terms of the similarity of the disputed domain name to the VICTORIA’S SECRET mark, the TLD of a domain name is viewed as a standard registration requirement and as such is disregarded for the purposes of the identity/confusing similarity test. (Section 1.11.1 of the WIPO Overview 3.0). The logic of this position holds most strongly for ccTLDs such as “.ie” in this case.

Apart from the ccTLD, the only difference between the disputed domain name and the VICTORIA’S SECRET mark is the omission of the space between the words and of the apostrophe – which are excluded in domain names and the absence of which does not serve to distinguish the protected identifier from the disputed domain name.

In view of these matters, the Panel finds the disputed domain name to be identical in all material respects to the protected identifier relied upon by the Complainant, namely the VICTORIA’S SECRET mark.

B. Rights in Law or Legitimate Interests

Paragraph 3 of the IEDR Policy provides that the following factors may be considered as evidence of rights to or legitimate interests in the domain name:

“3.1.1. Where the Respondent can demonstrate that before being put on notice of the Complainant’s interests in the domain, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business.

3.1.2. Where the domain name corresponds to the personal name or pseudonym of the Respondent.

3.1.3. Where the domain name which is identical or misleadingly similar to a geographical indication has been used, in good faith, by the Respondent before such geographical indication was protected in the Island of Ireland.”

In recognition of the difficulty that there can be in proving a negative under this head of a complaint, the practice has evolved among UDRP panels (see section 2.1 of the WIPO Overview 3.0) to require a complainant in the first instance to establish a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. In the normal course the burden of production would then shift to the respondent to demonstrate rights or legitimate interests in the disputed domain name.

In this regard and in respect of the indicia of rights and legitimate interests set out in paragraph 3 of the IEDR Policy, it is clear that 3.1.2 and 3.1.3 have no application in this case.

Apart from registration in 2002 of the “Victoria’s Secret” business name by the Respondent, there is no evidence of any preparation to use the disputed domain name in connection with an offering of goods or services or the operation of a business. As regards the registration of the business name, it was registered in 2002, and apparently, not used by the Respondent in any way since then. The Complainant indicates that its investigations in this respect did not reflect any business being conducted under the VICTORIA’S SECRET mark at the address given for the business name registration. Furthermore, the Complainant contends that the business name registration and the subsequent domain name registration could not have been done without knowledge of the VICTORIA’S SECRET mark and, essentially, that it was the Respondent’s awareness of the Complainant’s VICTORIA’S SECRET business that prompted the said registrations.

In light of the fact that no explanation, either in pre-Complaint correspondence or as part of the Complaint, has been given by the Respondent of the independent origination of the “Victoria Secret” business name or disputed domain name and that no explanation has been given for its registration for “lingerie distribution wholesale and retail” – the items for which the Complainant’s mark has historically been best known internationally, the only reasonable inference arising is that the business registration derived from knowledge of the Complainant’s VICTORIA’S SECRET business and brand.

The geographically-specific nature of the Respondent’s statement in pre-Complaint correspondence that she was not aware of “any trading or reputation held by VICTORIA’S SECRET in the Republic of Ireland” at the time of registration of the disputed domain name, does more to confirm this inference than to undermine it, reminiscent as it is of the practice sometimes engaged in of applying to gain rights to a domain name incorporating an internationally famous mark before the domain name is acquired in the specific jurisdiction by the brand owner. This is one of the classical circumstances for which the UDRP and the IEDR Policy were designed to address.

Accordingly, the Panel finds that on the balance of probabilities, (the applicable standard of proof – section 4.2 of the WIPO Overview 3.0) the Respondent was aware of the Complainant’s interest in the VICTORIA’S SECRET business and mark at the time of registration of the disputed domain name and of the registration of the “Victoria’s Secret” business name.

On that basis the Panel finds that the Respondent does not have rights in law in the disputed domain name or a legitimate interest in it within the meaning of those terms in the IEDR Policy.

C. Registered or Used in Bad Faith

Paragraph 2 of the IEDR Policy provides that among the indicia of bad faith are:

2.1.1 Where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the complainant or to a competitor of the complainant for valuable consideration in excess of the registrant’s documented expenses which are directly related to the registration of the domain name;

2.1.2 Where the domain name has been registered or is used primarily in order to prevent the complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name;

2.1.3 Where the registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the complainant;

2.1.4. Where the registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the complainant has rights;

2.1.5. Where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the complainant has rights;

2.1.6. Where the registrant had intentionally provided misleading or false information when applying for the domain name registration.

The Complainant relies mainly on paragraph 2.1.2 in its submission.

The fact that the Respondent has not used the disputed domain name does not preclude a finding of bad faith as that term is used in the IEDR Policy.

In “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246 the panel was dealing with a case where the domain name was not being actively used and found that lack of active use did not preclude a finding of bad faith within the meaning of the UDRP but that all the circumstances of the case had to be considered. The panel said:

“However, the consensus view amongst WIPO panellists is that ‘the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trade mark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trade mark, no response to the complaint having been filed, and the registrant’s concealment of its identity’.”

The material circumstances falling to be considered in this case are that the disputed domain name registered by the Respondent comprised an internationally well-known mark, that it was registered as part of a business name and the disputed domain name for the goods for which the mark was best known and in circumstances where the Respondent has not disavowed her knowledge of the mark but merely questioned the trading status of the brand in the State at the time of registration. Subsequently, the Respondent completed the forms necessary to have the disputed domain name transferred to the Complainant and took no active part in responding to the Complaint.

The Panel has already found that the VICTORIA’S SECRET mark was incorporated in the disputed domain name in light of the Complainant’s business and brand and not independent of it. In such circumstances, the Respondent knew that the Complainant could not then incorporate its VICTORIA’S SECRET mark into a domain name in the “.ie” ccTLD and the intention that this should be the case must therefore have formed a primary intention for the Respondent in registering the disputed domain name – if only as the necessary consequence of her actions. However, whatever the motivation for the registration of the disputed domain name, in circumstances where its value to the knowledge of the Respondent lay in the origination and use by the Complainant of the mark encompassed within it and where any use of it by the Respondent would fall foul at least of subparagraphs 2.1.4 and 2.1.5 of the IEDR Policy, its registration and any prospective use fall within the subcategories of bad faith set out at paragraph 2 of the IEDR Policy.

Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith within the meaning of the IEDR Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5 of the IEDR Policy and 15 of the Rules, the Panel orders that the disputed domain name <victoriassecret.ie> be transferred to the Complainant.

Yvonne McNamara
Sole Panelist
Dated: November 13, 2017

¹ Due to the similarities between the IEDR Policy and the UDRP, the Panel refers to prior UDRP decisions where appropriate.