Generic Top Level Domain Name (gTLD) Decisions

Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainants") represented by Lisa A. Dunner, of McDermott, Will & Emery. Respondent is Diego Decal, Miami, FL, USA ("Respondent").

The domain name at issue is "evictoriasecrets.com" registered with Register.com.

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 submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 27, 2001; the Forum received a hard copy of the Complaint on January 23, 2001.

On January 30, 2001, Register.com confirmed by e-mail to the Forum that the domain name "evictoriasecrets.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 February 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 21, 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@evictoriasecrets.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 Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Hon. Carolyn Marks Johnson 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, evictoriasecrets.com, is nearly identical to the famous mark VICTORIA’S SECRET as well as the domain name, victoriassecret.com. In addition, Complainants allege that Respondent has no rights or legitimate interests in the disputed domain name. And finally, Complainants urge that Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent has not submitted a response in this matter.

Complainants are Victoria’s Secret and its owner V Secret Catalogue. Since 1977, Complainants’ famous mark has been used continuously to sell women’s lingerie, beauty products, outerwear, as well as gift items. Accordingly, Complainants’ famous mark serves as the name for over 800 retail stores located throughout the United States. In addition Complainants use their famous mark in connection with international mail order catalogue sales and Internet commerce via Complainants’ web site, victoriassecret.com.

In 1999, Complainants sold $2.94 billion of merchandise bearing or in connection with their famous mark. In addition, Complainants maintain prominent advertisement campaigns that have succeeded in catapulting the mark, and family of marks, into the realm of one of the most famous and recognizable marks. Consequently, Complainants’ mark has acquired significant goodwill, widespread recognition and fame among the general public.

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

Respondent, Diego Decal, is not using the disputed domain for any purpose. Complainants sent Respondent a Cease and Desist letter via e-mail and certified mail, informing Respondent that its domain name infringes upon Complainants’ trademark rights. To date, Respondent has failed to respond to Complainants’ request.

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

Paragraph 4(a) of the Policy requires that a 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has 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 Policy, 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. Here, Complainants’ rights are evidenced by its registered mark, VICTORIA’S SECRET. Respondent’s domain name, evictoriasecrets.com, is confusingly similar to Complainants’ mark because it differs by just one letter. Accordingly, the only difference between Respondent’s domain name and Complainants’ famous mark is an "e" has been added, and the letter "s" has been moved to the end of the mark. However, the overall impression of the mark has not changed. This is an identical to or confusingly similar domain name. See Reuters Limited v Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark); EBAY, Inc. v. MEOdesigns and Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent’s domain name "eebay.com" is confusingly similar to the Complainant’s registered trademark)

The Panel finds that Respondent’s domain name is identical to and/or confusingly similar to the Complainants’ well-established mark.

Complainants have demonstrated well-established rights to their registered marks. The record shows as well that Respondent has not shown any right to use Complainants’ mark and that Respondent is not commonly known by Complainants’ mark that was used to create this domain name. See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Further, Respondent is not using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. 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 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 has not claimed a right to the mark. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where 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 proven); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Therefore, the Panel finds that Complainants have established rights to and interest in the mark used to create the domain name in issue and that Respondent has no rights to or legitimate interests in relation to the registered mark used to create this disputed domain name.

Complainants have established their long-standing use of their famous mark. The widespread use by Complainants of their mark and the international scope of its renown permits the inference that Respondent knew that Complainants had superior right to Complainants’ mark prior to registering the disputed domain name. This supports a finding of bad faith. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue"); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainants’ 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).

Further, Respondent’s registration of the disputed domain, which is so obviously similar to Complainants’ mark, shows Respondent’s intent to create a likelihood of confusion with Complainants’ famous mark as to the source sponsorship, affiliation, or endorsement of its web site. This conduct also demonstrates bad faith. See 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 Complainants’ well known marks, thus creating a likelihood of confusion strictly for commercial gain).

The Panel finds that Respondent registered and used the disputed domain name in bad faith.

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

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