Generic Top Level Domain Name (gTLD) Decisions

Complainant is Victoria's Secret Stores, Inc., Columbus, OH, USA ("Complainant") represented by Melise Blakeslee, McDermott, Will, Emery. Respondent is Victoria's Secrets, Hagersville, ON, Canada ("Respondent").

The domain name at issue is "victorias-secrets.net" registered with Network Solutions.

The Panelist certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 27, 2000; The Forum received a hard copy of the Complaint on September 25, 2000.

On September 28, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "victorias-secrets.net" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 4, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 23, 2000 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@victorias-secrets.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 31, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

B. Respondent did not file a response in this matter.

This proceeding is based upon the famous trademark and service mark VICTORIA’S SECRET. Complainant owns rights in the registered trademark VICTORIA’S SECRET and many variations thereof. These marks have been adopted and continually used in commerce by Complainant and its predecessors since June 12, 1977 in connection with the sale of women’s lingerie, beauty products, outerwear, and gift items.

Complainant uses the famous mark VICTORIA'S SECRET as the name of its 800 Victoria's Secret retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA'S SECRET. Complainant also uses the mark VICTORIA'S SECRET in conjunction with international mail order catalogue sales and Internet commerce through Complainant’s web site, located at <www.victoriassecret.com>.

As a result of this widespread, long-time, continuous, and prominent use of the mark VICTORIA'S SECRET, the mark VICTORIA'S SECRET has acquired significant goodwill, wide public recognition, and fame as a means by which Complainant is known to the public. See V Secret Catalogue et al. v. Artco Inc., FA 94342 (Nat. Arb. Forum May 9, 2000) (recognizing VICTORIA'S SECRET as a famous mark).

Respondent registered and used the domain name victoria-secrets.net in connection with a pornographic website.

Counsel for Complainant sent Respondent a cease and desist letter on October 8, 1999, that included notification of Complainant’s United States Trademark Registrations for the mark VICTORIA'S SECRET, and requesting that Respondent cancel her registration of the domain name with Network Solutions, Inc. or to assign the domain name to the Complainant. Subsequently Respondent agreed to take down the website and to transfer the domain name in exchange for out of pocket fees and costs associated with the registration of the domain name and transfer thereof. Respondent then changed her mind and, in bad faith, offered to "sell" the domain name for first $1 million and then $250,000. Complainant rejected these offers and again offered to reimburse Respondent for her out of pocket costs and fees.

On August 10, 2000, despite her full knowledge of Complainant’s rights, Respondent decided that she was going to offer the domain name for sale to third parties on the Internet. Respondent in a bad faith attempt to force Complainant to buy the domain name notified Complainant of her intentions.

Given Respondent’s failure to respond to the allegations set forth in the Complaint, the Panel will base the following discussion solely on the Complaint. ICANN Rules ¶ 14, 15. The Panel concludes that Respondent does not contest any allegation set forth in the Complaint. See id.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Respondent's registered domain name, <victorias-secrets.net>, is confusingly similar to Complainant’s mark VICTORIA'S SECRET and Complainant’s domain name, <victoriassecret.com>, used in connection with the legitimate sale of products bearing the mark VICTORIA'S SECRET. Adding a hyphen to Complainant’s mark and adding an "s" to the end of the mark creates a likelihood of confusion with Complainant’s mark. See The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that a hyphen between words of Complainant’s registered mark is confusingly similar); Cream Pie Club v. Britany Halford, FA95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of Complainant’s mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

To date Respondent has not articulated any rights or legal interest that she has in the domain name, and it is not possible to conceive of any plausible actual or contemplated active use of the domain names by Respondent that would not be illegitimate under the facts of this case. The Panel concludes that Respondent has no rights or legitimate interest in the domain name.

The Panel concludes that Respondent has acted in bad faith, based on the following circumstances:

The Panel concludes that Respondent registered and used the domain name in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "victorias-secrets.net", be transferred from Respondent to Complainant.