Generic Top Level Domain Name (gTLD) Decisions

Complainant is Victorias's Secret Catalogue, Columbus, OH, USA ("Complainant") represented by Melise Blakeslee, McDermott, Will & Emery. Respondent is VICTORIASECTRETS.COM, San Francisco, CA, USA ("Respondent").

The domain names at issue are "victoriasectrets.com" and "victoriassecerts.com" registered with Network Solutions.

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

Honorable Carolyn Marks Johnson sits as Panelist.

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 9-28-00, Network Solutions confirmed by e-mail to the Forum that the domain names "victoriasectrets.com" and "victoriassecerts.com" are 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 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@victoriasectrets.com and postmaster@victoriassecerts.com 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 names be transferred from Respondent to Complainant.

A. Complainant urges the three required elements:

B. Respondent did not file a response.

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 06/12/77 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).

Counsel for Complainant sent Respondent a cease and desist letter on July 14, 2000, enclosing Complainants' 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. The letter was returned as not claimed from the U.S. Postal Service.

Respondent’s websites victoriasectrets.com and victoriassecerts.com link users to www.orgie.com, a pornographic website.

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 the 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 the 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 to 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 names, "victoriasectrets.com" and "victoriassecerts.com" are virtually identical to and 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 extra letters to Complainant’s mark and juxtaposing letters in Complainant’s mark creates a likelihood of confusion with Complainant’s mark. See Cream Pie Club v. Britany Halford, FA95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the 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"); America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s mark AOL).

To date Respondent has failed to articulate any rights or legal interest he has in the domain name, nor is it possible to conceive of any plausible actual or contemplated active use of the domain names by Respondent that would not be illegitimate. 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 names, "victoriasectrets.com" and "victoriassecerts.com" be transferred from Respondent to Complainant.