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 Lori Learmont, Oshawa, ON, Canada ("Respondent").

The domain names at issue are "victoriassecretlingeriemodels.com" and "victoria-secret-models.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.

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 30, 2001; the Forum received a hard copy of the Complaint on January 29, 2001.

On January 30, 2001, Registrars.com confirmed by e-mail to the Forum that the domain names "victoriassecretlingeriemodels.com" and "victoria-secret-models.com" are 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 31, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 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@victoriassecretlingeriemodels.com and postmaster@victoria-secret-models.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 February 27, 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 names be transferred from the Respondent to the Complainants.

A. Complainants

Respondent's registered domain names, "victoriassecretlingeriemodels.com" and "victoria-secret-models.com", are 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". Respondent's domain names create a 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, Complainants have approximately twenty applications pending before the United States Patent and Trademark Office that contain the mark VICTORIA'S SECRET and variations thereof.

Respondent’s domain names are nearly identical to the Complainants’ mark.

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

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

Respondent is not making a legitimate noncommercial or fair use of the domain names.

Despite Complainants’ repeated requests, to date Respondent has failed to articulate any rights or legal interest they have in the domain names, nor is it possible to conceive of any plausible actual or contemplated active use of the domain names 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 disputed 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 "victoriassecretlingeriemodels.com" and "victoria-secret-models.com" domain names on January 13, 2000.

Complainants sent Respondent a cease and desist letter via e-mail and certified mail dated November 27, 2000 informing Respondent that the domain names infringes upon Complainants' trademark rights and requesting that Respondent assign the domain names to Complainants. The e-mail copy of this letter was successfully delivered to Respondent's listed e-mail address.

On November 28, 2000, Respondent wrote to Complainants explaining that it desired to maintain a "fan site" at the "victoriassecretlingeriemodels.com" domain name.

To date, Respondent has failed to respond to Complainants' requests and continues to control the domain names.

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 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 names are partly comprised of terms identical or confusingly similar to Complainants’ trademark VICTORIA’S SECRET. The phrase "victoriassecret" is identical to the Complainants’ trademark. See Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name "facup.com" is clearly identical to the FA CUP trademark belonging to Complainant).

The phrase "victoria-secret-" is confusingly similar to Complainants’ trademark because neither the deletion of the letter "s" from VICTORIA'S SECRET nor the addition of hyphens diminishes the likelihood of confusion under Policy 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (stating "[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features").

Likewise, the addition of the term "models" or "lingeriemodels" does not reduce the likelihood of confusion under Policy 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).

Also, the addition of ".com" to the phrases "victoriassecretlingeriemodels" and "victoria-secret-models" does not reduce the likelihood of confusion. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) (holding that "post-it.com" and "Post-It" are the same); see also Croatia Airlines v. Kwen Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines").

Therefore, the Panel finds that the domain names "victoriassecretlingeriemodels.com" and "victoria-secret-models.com" are confusingly similar to the Complainants’ marks.

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

Further, Respondent has not offered any evidence that it is commonly known by either "victoriassecretlingeriemodels.com" or "victoria-secret-models.com" to satisfy the requirement under Policy 4(c)(ii) or that it is using the domain names in connection with a noncommercial purpose under Policy 4(c)(iii). Respondent has provided no information to support a contention that a "fan site" has been created or is a legitimate use of a domain name.

Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by either domain name. 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).

Because of the popularity of Complainants’ goods and the prominence of their marks, it may be assumed that the Respondents had notice of Complainants’ marks at the time of the domain name registrations. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

The domain names in question are so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (stating "the domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith").

Additionally, Respondent’s proposed use of the "victoriassecretlingeriemodels.com" domain name as a "fan site" is in bad faith because Complainants have not authorized the use of their VICTORIA’S SECRET mark. See National Rifle Association v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) (finding bad faith where Respondent registered the domain names "friendsofnra.com", "friendsofnra.net", and "friendsofnra.org" with the intention of using the domain names in connection with individual NRA fundraising, but without permission from Complainant to use the registered marks); see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

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 names "victoriassecretlingeriemodels.com" and "victoria-secret-models.com" be transferred from Respondent to Complainants.