Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com

V SECRET CATALOGUE, INC., VICTORIA’S

SECRET CATALOGUE, INC., VICTORIA’S SECRET

STORES, INC., AND INTIMATE BRANDS, INC., D/B/A

VICTORIA’S SECRET BEAUTY

Complainant

vs.

VICTORIASSECRET.ORG

(A/K/A BARNET WORLDWIDE ENTERPRISES)

Respondent.

DECISION
FILE NUMBER: FA0003000094349

The above entitled matter came on for an administrative hearing on May 10, 2000, before the undersigned administrative panel on the Complaint of V SECRET CATALOGUE, INC., VICTORIA’S SECRET CATALOGUE, INC., VICTORIA’S SECRET STORES, INC., AND INTIMATE BRANDS, INC., d/b/a VICTORIA’S SECRET BEAUTY ("Complainant"), against VICTORIASSECRET.ORG (a/k/a Barnet Worldwide Enterprises) ("Respondent"). Upon the written submitted record including the Complaint, Respondent’s Response, Complainant’s Rebuttal, and Respondent’s Rebuttal, the following DECISION is rendered:

PROCEDURAL FINDINGS

Domain Name: victoriassecret.org

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Victoriassecret.org

Date of Domain Name Registration: February 17, 1998

Date Complaint Filed: March 23, 2000

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent in compliance with Rule 2(a) of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. An administrative panel was selected in accordance with the Rule, and the Complaint was docketed and forwarded to the panel for decision on May 2, 2000.

JURISDICTION

Respondent asserts that, since it registered the subject domain name prior to the enactment of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy and the subsequent adoption of the Policy, it is not bound by the terms of the Policy and Rules. However, according to Paragraph 1 of the Network Solutions, Inc. Policy in effect at the time of Respondent’s registration, "Registrant acknowledges and agrees that these guidelines may change from time to time and that, upon thirty (30) days posting on the internet, Network Solutions, Inc., may modify or amend this Policy, and that such changes are binding upon Registrant." By adopting the ICANN Policy and Rules, Network Solutions, Inc. was simply exercising a right expressly reserved in the contract with the Respondent. Accordingly, Respondent is bound by the ICANN Policy and Rules, and the current Uniform Domain Name Dispute Resolution Policy, which took effect on January 1, 2000, is incorporated by reference in all registration agreements then in existence, including that of Respondent. Accordingly, Respondent’s preliminary argument with respect to the jurisdiction of the Administrative Panel and the application of this procedure is denied.

FINDINGS OF FACT AND CONCLUSIONS

1. The VICTORIA’S SECRET Mark is duly registered in the United States Patent and Trademark Office under fourteen valid, subsisting, and uncancelled registrations, and V SECRET CATALOGUE, INC., is the owner thereof.
2. Respondent’s registered domain name, victoriassecret.org, is identical to and/or confusingly similar to the Complainant’s VICTORIA’S SECRET Mark and the domain name used by Complainant in connection with the legitimate sale of products bearing the VICTORIA’S SECRET Mark, namely victoriassecret.com. The only difference between Complainant’s Mark and the Respondent’s domain name is the absence of an apostrophe. This absence is inconsequential with respect to domain names, because apostrophes are unavailable as characters in domain names.
3. By registering the Complainant’s VICTORIA’S SECRET Mark in the .org top-level domain, Respondent’s domain name creates a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship,

affiliation, or endorsement of Respondent’s web site or of a product on its web site and is likely to misleadingly divert web users trying to locate the legitimate VICTORIA’S SECRET web site.

4. Respondent is not commonly known by the domain name, either as a business, individual, or other organization. See Policy Paragraph 4(c)(ii).
5. Respondent does not currently have an active web site at the domain name victoriassecret.org, but previously the domain name at issue was used in conjunction with another web site owned by the Respondent, sexywebhost.com, which offers internet hosting for adult sites.
6. Respondent’s reason for use of the victoriassecret.org domain name in connection with this web site, concerning adult web sites, was to misleadingly divert customers with the intent for commercial gain. See Policy Paragraphs 4(c)(iii), 4(b)(iv).
7. Respondent has not articulated any rights or interest it may have in the domain name.
8. Respondent’s registration of victoriassecret.org is likely to tarnish and disparage the reputation and goodwill associated with the VICTORIA’S SECRET Mark and be dilutive of the Mark by frustrating web users trying to locate the Complainant’s web site, victoriassecret.com.

DECISION

Accordingly, we find, as a matter of law, that Respondent’s registration and use of the domain name victoriassecret.org was in bad faith. Further, in accordance with the above findings, the Administrative Panel hereby determines that the domain name victoriassecret.org be transferred to the Complainant, V SECRET CATALOGUE, INC.

Signed this 15^th day of May, 2000, by the duly selected members of the Administrative Panel herein.

/s /John J. Upchurch________________________

Honorable John J. Upchurch, Circuit Judge (Ret.)

Arbitrator/Panel Chairman