Generic Top Level Domain Name (gTLD) Decisions

Complainant is Victoria's Secret, et. al., Columbus, OH, USA ("Complainant") represented by Lisa Dunner, of McDermott, Will & Emery. Respondent is Ralph Kattan GU, Washington, DC, USA ("Respondent").

The domain name at issue is "victoriassecretdirect.com" registered with Network Solutions.

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainants are Victoria Secret entities that submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 21, 2000; the Forum received a hard copy of the Complaint on December 26, 2000.

On December 27, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name "victoriassecretdirect.com" 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 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 18, 2001 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@victoriassecretdirect.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 January 26, 2001, pursuant to Complainants’ request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson (Ret.) 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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.

Complainants request that the domain name be transferred from Respondent to Complainants.

A. Complainants

Complainants assert that Respondent’s domain name, victoriassecretdirect.com, is confusingly similar to Complainants’ registered mark VICTORIA’S SECRET as well as Complainants’ domain name used in connection with the legitimate sale of products bearing its famous mark.

Also, Respondent has no rights or legitimate interests in the domain name at issue.

And finally, Respondent registered and used its domain name in bad faith because: (i)

Respondent provided inaccurate and incomplete contact information to registrar, Network Solutions; (ii) Respondent’s use demonstrates an intent to attract Internet users to its web site by creating a likelihood of confusion with Complainants’ famous mark; (iii) Respondent’s use tarnishes the reputation and goodwill associated with Complainants’ famous mark; and (iv) Respondent’s domain registration is a violation of Section 43(d)(1) of the United States Trademark Act, as amended by Pubic Law 106-113 (November 29, 1999).

B. Respondent

Complainant, Victoria’s Secret, is owned by V Secret Catalogue. Since 1977, Complainants’ well-known and widely recognized mark has been used continuously to sell women’s lingerie, beauty products, outerwear, and gift items. Complainants’ famous mark serves as the name of over 800 retail stores located throughout the United States. In addition, Complainants use their famous mark in conjunction with international mail order catalogue sales and Internet commerce through Complainants’ web site, www.victoriasecret.com.

In 1999 alone, Complainants sold more than a billion dollars of merchandise bearing, or in connection with their famous mark. Complainants also maintain prominent advertisement campaigns that have succeeded in catapulting their mark into the realm of one of the most famous and recognizable marks. Consequently, Complainants’ mark has acquired significant goodwill, widespread recognition, and fame. Complainants and their merchandise are known to the public and their source and origin are identified to Complainants’ mark.

Complainants’ mark is duly registered with the United States Patent and Trademark Office under sixteen valid registrations. In addition, Complainants have approximately twenty applications pending for different variations of their famous mark.

Respondent, GU, is an alias of Ralph Kattan. On November 17, 2000, Complainants sent Respondent a Cease and Desist letter, informing Respondent that its domain name infringes upon Complainants’ famous mark; to which Complainants received no response. Complainants’ counsel sent follow-up letters but received no responses to these as well.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainants' undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that Complainants 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have 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.

Under the UDRP, Complainants must demonstrate that they have rights in the mark, and that the domain name at issue is identical or confusingly similar to that mark.

Accordingly, Complainants’ rights are evidenced by its registered mark, VICTORIA’S SECRET. Respondent’s domain name, victoriassecretdirect.com, is identical to Complainants’ mark except for the addition of a generic term; which makes the domain name at issue confusingly similar to Complainants’ well-established mark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).

Further, Respondent’s domain name is confusingly similar because a reasonable Internet user would assume that the Respondent’s domain name is in some way affiliated with the Complainants’ famous mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Consequently, the Panel finds that Respondent’s domain name is confusingly similar to Complainants’ mark.

Complainants have shown that Respondent is not commonly known by the domain name. Nor is Respondent using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. Policy ¶ 4(c)(i), (ii) and (iii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainants’ marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent asserted no rights or legitimate interests in the domain name at issue. Accordingly, Respondent’s failure to show evidence sufficient to rebut Complainants’ assertions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name at issue. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

The Panel finds Respondent has no rights or legitimate interests in the domain name at issue.

Respondent’s registration of the domain name at issue demonstrates intent to create a likelihood of confusion with Complainants’ famous mark as to the source sponsorship, affiliation, or endorsement of its web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s web site).

Also, given the current popularity of Complainants’ famous mark, Respondent had to have been aware of its mark prior to registering the domain name in question; which supports a finding of bad faith. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Finally, Complainants have shown Respondent’s registration contained inaccurate and/or misleading information, which also supports a finding of bad faith. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO April 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

Therefore, the Panel finds Respondent registered and used the domain name at issue in bad faith.

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, victoriassecretdirect.com, be transferred from Respondent to Complainant.