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 Victoria's Cyber Secret, Miami, FL, USA ("Respondent").

The domain names at issue are "victoriassexsecret.com", "victoriassexysecret.com", "victoriasexsecret.com", "victoriasexysecret.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 29, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "victoriassexsecret.com", "victoriassexysecret.com", "victoriasexsecret.com", "victoriasexysecret.com" are 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 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@victoriassexsecret.com, victoriassexysecret.com, victoriasexsecret.com, victoriasexysecret.com by e-mail.

Having received no Response from Respondent before the deadline for filing a Response had passed, 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. The Panel notes that Respondent filed a late Response in this case; the Panel reviewed it to determine if equity would require consideration of the late-filed Response. Even if the Panel were to consider the Response to be timely and give it full weight, it would not alter the outcome in this case.

On February 26, 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 the Respondent.

Complainants request that the domain names be transferred from Respondent to Complainants.

A. Complainants

Complainants assert that Respondent’s domain names, victoriassexsecret.com, victoriassexysecret.com, victoriasexsecret.com, and victoriasexysecret.com are confusing similar to their famous marks VICTORIA’S SECRET, VICTORIA’S SECRET SEXY, and VICTORIA’S SECRET SEXY ANGELS. Also, Respondent has no rights or legitimate interests in the domain names at issue. Finally, Respondent has registered and used the disputed domain names in bad faith.

B. Respondent

Respondent has not submitted a timely 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 this famous mark in connection with international mail order catalogue sales and Internet commerce via Complainant’s web site, victoriassecret.com.

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 its 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.

The Respondent of the domain name in dispute, Victoria’s Cyber Secret, is known as RS Schmitt. On May 9, 2000, Complainants sent Respondent a Cease and Desist letter informing Respondent that the domain names in issue infringe upon Complainants’ trademark rights. Respondent replied via email indicating that the domain names were available for Complainants’ use upon delivery of "an amicable transfer agreement." On May 17, 2000, Complainants sent Respondent forms to facilitate transfer of the domain names at issue to no avail. To date, Respondent has not used the disputed 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 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 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 and legitimate interest in its mark are established. Complainants own the registered mark, VICTORIA’S SECRET, as well as a related family of marks. Respondent’s domain names victoriassexsecret.com, victoriassexysecret.com, victoriasexsecret.com, and victoriasexysecret.com all fully incorporate Complainants’ famous mark and are therefore virtually identical to Complainants’ mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[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 NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the "domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT").

Further, Respondent’s domain name is confusingly similar because a reasonable Internet user seeking Complainants’ mark would assume that Respondent’s domain name is somehow associated with Complainants’ famous mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

The Panel finds that Respondent’s domain names are confusingly similar to Complainants’ well-established mark and family of marks.

Complainants have demonstrated that Respondent is not commonly known by the disputed domain names. Complainants have shown that Respondent is not using the domain names in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. 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).

Respondent’s asserted right to or legitimate interest in the disputed domain names is not persuasive. The Panel finds that Respondent has no rights to or legitimate interests in relation to the disputed domain names. See 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); 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").

The Panel finds that Respondent has no right to or legitimate interest in the disputed domain names.

Given the popularity of Complainants’ famous mark, Respondent had to have been aware of Complainants’ mark prior to registering the disputed domain names, which 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 the Respondent demonstrated bad faith where the Respondent was aware of the 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).

Moreover, Respondent’s registration of the disputed domain names demonstrates intent to create a likelihood of confusion with Complainants’ famous mark as to the source sponsorship, affiliation, or endorsement of its web site. 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 names in bad faith.

Having established all three elements required under ICANN Policy, the Panel finds that the requested relief should be and it is hereby granted. Accordingly, it is Ordered that the domain names, victoriassexsecret.com, victoriassexysecret.com, victoriasexsecret.com, and victoriasexysecret.com, be transferred from Respondent to Complainants.