Victoria’s Secret Stores Brand Management, Inc. v Eric Poustie

Leigh Walters and Sisi Jia
Published September 16th, 2014

CIRA Domain Name Dispute No. 263

This case involves a request for transfer of the domain name <victoriassecret.ca> which was registered by Eric Poustie (the “Registrant”) in 2000. The Complainant is the owner of numerous Canadian trade-mark registrations for VICTORIA’S SECRET marks.

The Registrant claimed the website has been used solely for the purposes of redirecting traffic to the Complainant’s website. The evidence established that the Registrant attempted to sell the Domain Name to the Complainant at a premium, redirected traffic to the website of a competitor of the Complainant and had the domain name resolved to a website that contained the same content of the Complainant but with misaligned tabs and toolbars and inconsistent functionality. The Registrant failed to establish a legitimate interest in the domain name. Transfer ordered.

Analysis

Confusingly Similar

The Complainant’s VICTORIA’S SECRET trade-marks were registered in Canada in 1986 and 1994 and had been in continuous use since at least as early as 1977; clearly predating the Registrant’s registration of the domain name in 2000.

As the Complainant’s trade-marks were incorporated entirely into the domain name, it was confusingly similar to the Complainant’s “Victoria’s Secret Mark”.

Bad Faith

As there was no evidence to suggest the Registrant engaged in a pattern of behaviour registering domain names to prevent the rightful owners from registering their marks as .ca domain names, bad faith was not established on this basis.

A finding of bad faith can be made if it is established the Registrant registered a domain name primarily for the purpose of selling, renting, licensing or otherwise transferring the domain name to the Complainant or its competitors for valuable consideration in excess of the costs of registration and transfer. In the present case, the Complainant presented evidence of the Registrant offering to transfer the domain name for compensation in the amount of $7,800.

Under subparagraph 3.5(c) of the CIRA Domain Name Dispute Resolution Policy, “registering a Domain Name for the primary purpose of disrupting the business of the Complainant, who is a competitor of the Registrant, is evidence of bad faith”. The evidence established that for a short period of time (approximately 6 weeks) the Registrant’s site directed consumers to the website of a competitor of the Complainant where consumers were able to purchase apparel of the competitor. As a result of this temporary redirection, the Panel found the Registrant was a competitor of the Complainant and registration of the domain name was solely for the purpose of disrupting the Complainant’s business. In adopting a domain name that incorporated the entire mark of the Complainant and redirecting traffic to a website that promotes the products of a competitor, the Panel was of the view the Registrant disrupted the Complainant’s business and misdirected potential sales that could otherwise have been captured by the Complainant.

The evidence also showed that for a time, the Registrant’s web site depicted the content of the Complainant’s victoriassecret.com website but with missing and/or misaligned tabs and toolbars which were not fully functional. The Panel held it was reasonable to infer that redirecting customers to a website that was not fully functional was also disruptive to the Complainant’s business.

Although the Registrant asserted that the domain name was used for the purposes of “protecting” the Complainant’s business and argued that the fact the domain resolved to the Complainant’s website signified he was not acting in bad faith, the Panel noted that the Registrant had no authorization from the Complainant to use a domain name identical to the Complainant’s trade-mark in order to capture and direct internet traffic.

As a result of the Registrant’s activities which disrupted the business of the Complainant, the Panel found the Complainant had proven the bad faith requirement on a balance of probabilities.

No Legitimate Interest

The Registrant failed to show any legitimate interest in the securing the domain name despite the assertion that he was at all times protecting the interest of the Complainant.

Given that the domain name was confusingly similar to the Complainant’s marks, the finding of bad faith on the part of the Registrant, and the failure of the Registrant to establish a legitimate interest in the domain name, the Panel ordered transfer to the Complainant.

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