Generic Top Level Domain Name (gTLD) Decisions

Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. Respondent is Tri X Group, Ltd., Los Angeles, CA, USA ("Respondent").

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

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. Hon. 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, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "victoriasxxxsecrets.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 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@victoriasxxxsecrets.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 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, victoriasxxxsecrets.com, is nearly identical to their famous mark VICTORIA’S SECRET as well as their domain name, victoriassecret.com. Complainants further urges that Respondent has no rights or legitimate interests in the disputed domain name. Finally, Complainants allege 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.

Complainants’ mark is also used on the Internet in connection with the world-famous Victoria’s Secret online fashion shows, which has attracted a record 2 million web site visitors from over 140 countries to a single live broadcast.

In 1999, Complainants sold $2.94 billion of merchandise bearing or in connection with its famous mark. In addition, Complainants maintain prominent advertisement campaigns that have succeeded in catapulting their 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, Tri X Group, Ltd., has not used the disputed domain name since registration; however, the use of the "xxx" permits the inference that Respondent is preparing to use the domain name in connection with pornographic products or services.

Counsel for Complainants sent Respondent a Cease and Desist letter via e-mail and certified mail. The e-mail copy of this letter was undeliverable due to false or misleading registration information. To date, despite Complainants’ repeated requests, Respondent has not articulated any rights or legitimate interests in the disputed domain name and the evidence permits the inference that Respondent cannot do so.

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 to or confusingly similar to a trademark or service mark in which the 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. Accordingly, Complainants’ rights are evidenced by the registered mark, VICTORIA’S SECRET. Respondent’s domain name is an obvious misuse of Complainants’ mark. The domain name victoriasxxxsecrets.com, is confusingly similar to Complainants’ mark because the only difference is the insertion of the letters "xxx" within Complainants’ mark. See Crédit Lyonnais v. Association Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter "e" and a hyphen does not affect the power of the mark in determining confusing similarity); see also 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, the domain name is confusingly similar)

The Panel finds that Respondent’s domain name is confusingly similar to Complainants’ well-established mark.

The evidence shows that Respondent is not commonly known by the disputed domain name and that 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 asserted no rights or legitimate interests in the disputed domain name. Thus, the Panel may conclude that Respondent has no such rights or legitimate interests in relation to the disputed domain name. 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 proven); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess).

The Panel finds that Complainants have rights to and legitimate interests in the mark that was used to create the domain name in issue and that Respondent has no such rights or legitimate interests in the disputed domain name.

Complainants have shown that Respondent registered the disputed domain name using false or misleading information. This is evidence of bad faith. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Inv., Inc. v. Smithberger and QUIXTAR-IBO, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).

Further, due to Complainants’ well-established, long-standing use of its famous mark, the evidence permits an inference that Respondent was aware of Complainants’ mark prior to registering the disputed domain name. This is evidence 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 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, Respondent’s registration of the disputed domain, which is so obviously similar to Complainants’ mark, permits the inference that Respondent intended to create a likelihood of confusion with Complainants’ famous mark as to the source sponsorship, affiliation, or endorsement of its web site. This also is evidence of 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 Complainant’s 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, victoriasxxxsecrets.com, be transferred from Respondent to Complainants.