Generic Top Level Domain Name (gTLD) Decisions

The Complainants in this administrative proceedings are Victoria’s Secret Stores, Inc., Intimate Beauty Corporation, Victoria’s Secret Direct, LLC Delaware corporations and limited liability companies having their principal place of business at Three Limited Parkway, Columbus, Ohio 43230, and V Secret Catalogue, Inc., a Delaware corporation having its principal place of business at 1105 North Market Street, Wilmington, Delaware 19801. Complainants are represented by Lisa Dunner, of McDermott, Will & Emery. The Respondent is Erno Lokhorst, Santa Monica, CA, USA ("Respondent").

The domain name at issue is "victoriassecretoutlet.com", registered with Network Solutions, Inc.

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.

Panelist is Judge Karl V. Fink (Retired).

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 23, 2001.

On February 2, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "victoriassecretoutlet.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 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 February 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 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@victoriassecretoutlet.com by e-mail.

A timely response was received on February 13, 2001.

On February 21, 2001, pursuant to Complainants’ request to have the dispute decided by a One Member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

The Complainants request that the domain name be transferred from the Respondent to the Complainant, V. Secret Catalogue, Inc.

A. Complainants

This Complaint is based upon the famous trademark and service mark Victoria’s Secret and variations thereof, which have been adopted and continually used in commerce by the Complainants and their 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 the 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’ website, located at victoriassecret.com.

The mark Victoria’s Secret has acquired significant goodwill, wide public recognition, and fame as a means by which Complainants and their merchandise are known to the public and their source and origin are identified.

The mark Victoria’s Secret is duly registered in the United States Patent and Trademark Office under seventeen valid, subsisting and uncanceled registrations, and V Secret Catalogue, Inc. is the owner thereof. Additionally, Complainant V. Secret Catalogue, Inc. has approximately twenty applications pending before the United States Patent and Trademark Office which contain the mark Victoria’s Secret and variations thereof.

The mark Victoria’s Secret is prominently used on the Internet in connection with the world famous Victoria’s Secret online fashion shows.

Respondent’s registered domain name, victoriassecretoutlet.com, is confusingly similar to the Complainants’ mark Victoria’s Secret and the domain name used by the Complainants in connection with the legitimate sale of products bearing the mark Victoria’s Secret, namely victoriassecret.com.

By merely adding the generic word "outlet" to the end of Complainants’ famous mark, Respondent has done nothing to prevent a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product on its web site. Therefore, Respondent’s domain name is likely to misleadingly divert web surfers trying to locate the legitimate Victoria’s Secret website.

Counsel for the Complainants sent Respondent a cease and desist letter via e-mail and certified mail dated November 28, 2000, informing Respondent that its domain name infringes upon Complainants’ trademark rights and requesting the Respondent reassign the domain name to the Complainants.

Respondent is not using the domain name in connection with a bona fide offering of goods and services. See Policy, paragraph 4(c)(i).

Respondent is not commonly known by the domain name, either as a business, individual or other organization, See Policy, paragraph 4(c)(ii).

Respondent is not making a legitimate noncommercial or fair use of the domain name. See Policy, paragraph 4(c)(iii).

Respondent is aware of Complainants’ United States Patent and Trademark Registrations and the Complainants’ long-standing use of the mark Victoria’s Secret, yet Respondent has refused to respond to Complainants’ letters or to transfer the domain name despite evidence of such trademark ownership.

Respondent’s conduct also demonstrates an intent to attract Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of his website. See Policy, paragraph 4(b)(iv). Simply adding the generic word "outlet" to the famous mark Victoria’s Secret does not mitigate the bad faith associated with registering a domain name.

Respondent has also registered other third party trademarks which is evidence of bad faith.

In addition, Respondent’s registration of victoriassecretoutlet.com violates Section 43(d)(1) of the United States Trademark Act, amended by Public Law 106-113 (November 29, 1999).

B. Respondent

Respondent purchased the domain name on or before October 24, 1999 and was not aware of any restrictions regarding purchasing .com names. Respondent is willing to transfer the domain name to Complainants or delete the name.

Complainants have proven all of the required elements of their claim. Respondent makes no claim to a right to keep the name and does not contest Complainants’ request to transfer the domain name.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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

Complainants own the registered mark, VICTORIA’S SECRET, which they and their predecessors have used since 1977, in connection with the sale of women’s lingerie, beauty products, outerwear, and gift items. Complainants contend Respondent’s domain name, victoriassecrectoutlet.com, is confusingly similar because the only difference between the Complainants’ mark and the domain name at issue is the addition of the generic word "outlet" to Complainants famous mark. See Sony Kabushiki Kaisha v, Inja, Kil D2000-1409 (WIPO Dec. 9, 2000) (finding the "[n]either the addition of an ordinary descriptive word … nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy 4(a)(I) is satisfied); see also Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name, bodyshopdigital.com. is confusingly similar to the Complainant’s <THE BODY SHOP> trademark).

The panel finds the domain name is confusingly similar to Complainants’ mark. See Victoria’s Secret et al v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (holding that adding the generic term "models" to the registered mark "Victoria’s Secret" does not circumvent the "identical or confusingly similar" test found in the Policy).

Respondent did not confirm or deny the domain name is identical or confusingly similar to Complainants’ mark and does not oppose the remedy requested by Complainants.

Complainants have proven this element.

Respondent has no rights or legitimate interests in the domain name in question because Respondent is not commonly known by the domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. 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 the domain names because it is not commonly known by Complainant’s 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).

Moreover, Respondent does not oppose the remedy requested by Complainants, which demonstrates Respondent’s lack of rights and legitimate interests. See Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent’s willingness to transfer the domain name at issue to Complainants, as reflected in its Response, is evidence that it has no rights or legitimate interests in relation to the domain name in question).

Respondent does not confirm or deny it has rights or legitimate interests in the domain name in question and does not oppose the remedy requested.

Complainants have proven this element.

Complainants assert that Respondent registered the domain name at issue to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainants’ well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s web site. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Finally, Respondent does not oppose the remedy requested by Complainants. See Marcor Int’l v. Len Langevin, FA 96317 (Nat. Arb. Forum Jan 12, 2001) (Respondent’s registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in the ICANN Policy).

Complainants 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.

The panel directs that the domain name "VICTORIASSECRETOUTLET.COM" be transferred to Complainant, V. Secret Catalogue, Inc.