Generic Top Level Domain Name (gTLD) Decisions

The Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. The Respondent is Powerbiz, Huntington Beach, CA, USA ("Respondent").

The domain name at issue is "victorias-secret-forever.com" registered with Registrars.com.

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

Hon. James A. Carmody, as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 23, 2001; the Forum received a hard copy of the Complaint on January 23, 2001.

On January 25, 2001, Registrars.com confirmed by e-mail to the Forum that the domain name "victorias-secret-forever.com" is registered with Registrars.com and that the Respondent is the current registrant of the name. Registrars.com has verified that Respondent is bound by the Registrars.com 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 January 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 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@victorias-secret-forever.com by e-mail.

On February 1, 2001 the Forum received a faxed copy of a letter from Respondent addressed to Complainants’ attorney denying ownership of the disputed domain name. No formal response was received.

Having received no formal 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 February 21, 2001, pursuant to Complainants’ request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 the Respondent.

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

A. Complainants

Respondent's registered domain name, "victorias-secret-forever.com", is confusingly similar to the Complainants' mark VICTORIA'S SECRET and the domain name used by Complainants in connection with the legitimate sale of products bearing the mark VICTORIA'S SECRET, namely "victoriassecret.com".

By merely adding hyphens and the word "forever" to Complainant's famous mark, Respondent does nothing to prevent likelihood of confusion with the Complainants' 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 surfers trying to locate the legitimate VICTORIA'S SECRET web site.

The mark VICTORIA'S SECRET is duly registered in the United States Patent and Trademark Office under seventeen valid, subsisting, and uncancelled registrations, and V Secret Catalogue, Inc. is the owner thereof. Many of these registrations are incontestable. Additionally, Complainant has approximately twenty applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA'S SECRET and variations thereof.

Respondent’s Domain Name is nearly identical to the Complainants’ mark.

Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.

Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization.

Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

Despite Complainants’ repeated requests, to date Respondent has failed to articulate any rights or legal interest they have in the Domain Name, nor is it possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate.

Respondent's conduct also demonstrates an intent to attract Internet users to their web site by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of his web site.

B. Respondent

The Respondent has not formally responded to the contentions addressed in the Complaint.

The VICTORIA'S SECRET trademarks and service marks have been adopted and continually used in commerce by the Complainants and predecessors since June 12, 1977 in connection with the sale of, inter alia, women's lingerie, beauty products, outerwear, and gift items.

Complainants use the famous mark VICTORIA'S SECRET as the name of its over 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. Complainants also use the mark VICTORIA'S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainants' web site, located at "victoriassecret.com".

In 1999, $2.94 billion of merchandise was sold bearing or in connection with the mark VICTORIA'S SECRET.

The mark VICTORIA'S SECRET is prominently used on the Internet in connection with the Victoria's Secret online fashion shows. In February 1999, Complainants launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was surpassed on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET.

The Respondent registered the "victorias-secret-forever.com" domain name on December 31, 1999.

Complainants sent Respondent a cease and desist letter via e-mail and certified mail dated November 27, 2000, informing Respondent that the domain name infringes upon Complainants' trademark rights and requesting that Respondent assign the domain name to Complainants. To date, Respondent has failed to respond to Complainants' requests and continues to control the domain name.

Respondent has not attempted to develop a web site in connection with the domain name.

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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 or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name is comprised of the Complainants’ trademark with an added hyphen, the terms "forever" added with a hyphen and ".com".

The mere addition of the generic word "forever" does not reduce the likelihood of confusion under Policy 4(a)(i). See Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name "quixtar-sign-up.com" incorporates in its entirety the Complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).

The hyphens do not distinguish the domain name from the Complainants’ mark. Also, the addition of ".com" to the phrase "victorias-secret-forever" does not reduce the likelihood of confusion. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) ("The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features").

Therefore, the domain name "victorias-secret-forever.com" is confusingly similar to the Complainants’ mark, and Complainants have met their burden set forth under Policy 4(a)(i).

Respondent did not seek registration of the "victorias-secret-forever.com" domain name until December 31, 1999, well after Complainants’ common law and federal registration rights in its VICTORIA’S SECRET family of marks and names were well-established. Given Complainants’ prior and exclusive rights in their family of VICTORIA’S SECRET names and marks, and that the Respondent has passively held the domain name, the Respondent has no legitimate rights in the "victorias-secret-forever.com" domain name. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

The Respondent has made no effort to use the domain name in connection with a bona fide offering of goods under Policy 4(c)(i).

Further, the Respondent has not offered any evidence that it is commonly known by the "victorias-secret-forever.com" phrase under Policy 4(c)(ii) or that it is using the domain name in connection with a noncommercial purpose under Policy 4(c)(iii). Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by this mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).

Therefore, the Panel determines that Complainants have established their burden set forth under Policy 4(a)(ii).

Because of the popularity of Complainants’ goods and the famousness of their marks, it may be assumed that the Respondents had notice of Complainants’ marks at the time of the domain name registration. The domain name in question is so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the Respondent had actual and constructive knowledge of the Complainant’s EXXON mark given the world-wide prominence of the mark and thus the Respondent registered the domain name in bad faith).

Therefore, the Panel concludes that the elements of Policy 4(a)(iii) have been satisfied.

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

Accordingly, it is Ordered that the domain name "victorias-secret-forever.com" be transferred from Respondent to Complainants.