Generic Top Level Domain Name (gTLD) Decisions

Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainant") represented by Lisa Dunner, of McDermott, Will & Emery. Respondent is Serbjeet Ahluwalia, Atlanta, GA, USA ("Respondent").

The domain name at issue is "victoriasecretsex.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 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 "victoriasecretsex.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. 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 6, 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@victoriasecretsex.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 March 2, 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 name be transferred from Respondent to Complainants.

A. Complainants

Complainants assert that Respondent’s domain name, victoriasecretsex.com, is confusingly similar to its famous mark VICTORIA’S SECRET as well as its domain name, victoriassecret.com. In addition, Complainants urge, Respondent has no rights or legitimate interests in the disputed domain name. And 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 and Internet commerce via Complainants’ 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 its famous mark.

Respondent Sebjeet Ahluwalia d/b/a TSE is not using the disputed domain for any purpose. On November 29, 2000, 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 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 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) 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 its registered mark, VICTORIA’S SECRET. Respondent’s domain name, victoriasecretsex.com, consists of Complainants’ mark and a generic term, which makes the domain name confusingly similar to Complainants’ famous 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 Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the Complainant’s trademark <THE BODY SHOP>).

Further, Respondent’s domain name is so confusingly similar to Complainants’ mark a reasonable Internet user would assume the domain name is somehow affiliated with Complainants’ business. 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 web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

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

Complainants have demonstrated that Respondent is not commonly known by the domain name in question 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 Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

In addition, Respondent has asserted no rights or legitimate interests in the domain name in question. Consequently, the Panel is entitled to conclude that Respondent has no such rights or legitimate interests in relation to the domain name in question. 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 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 rights or legitimate interests in the domain name in question.

Complainants have established their long-standing use of their famous mark. The reasonable inference may be drawn; therefore, that Respondent knew or had to have known about Complainants’ famous mark prior to registering the domain name in question. 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 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 domain in question, which is comprised primarily of Complainants’ famous mark, demonstrates Respondent’s intent to create a likelihood of confusion with Complainants’ 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 that given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant …the Respondent is attracting Internet users to a web site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s web site).

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 concludes that the requested relief shall be and is hereby granted.

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