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 Harold R. Brown II/Ted Waitt, Hermosa Beach, CA, USA ("Respondent").

The domain names at issue are "urn2victoriassecret.com", "urn2victoriassecrets.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 25, 2001.

On January 30, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "urn2victoriassecret.com", "urn2victoriassecrets.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 February 8, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 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@urn2victoriassecret.com, urn2victoriassecrets.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 8, 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 the Respondent.

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

A. Complainants

Complainants assert that Respondent’s domain names, urn2victoriassecret.com and urn2victoriassecrets.com, are confusingly similar to their famous mark VICTORIA’S SECRET as well as their domain name, victoriassecret.com. Also, Complainants urge, Respondent has no rights or legitimate interests in the disputed domain names. And finally, Complainants contend that Respondent registered and used the disputed domain names in bad faith.

B. Respondent

Respondent has not submitted a Response in this matter.

Complainants areVictoria’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 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, Harold R. Brown II/Ted Waitt, has not used the disputed domain for any purpose. On November 28, 2000, Complainants sent Respondent a Cease and Desist letter via e-mail and certified mail, informing Respondent that its domain names infringe 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 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 rights in the mark and must show that the domain names at issue are identical or confusingly similar to that mark.

Complainants established rights to their registered mark, VICTORIA’S SECRET. Respondent’s domain names, urn2victoriassecret.com and urn2victoriassecrets.com, are primarily comprised of the Complainants’ mark. This constitutes a domain name that is confusingly similar to another’s mark. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s mark AOL); see also 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 names are confusingly similar to the Complainants’ well-established mark.

Complainants have demonstrated that Respondent is not commonly known by the disputed domain names and 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 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); see also 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 asserted no rights or legitimate interests in the disputed domain names. Consequently, the Panel is entitled to conclude that Respondent has no such rights 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 rights or legitimate interests in the disputed domain names.

The evidence of the widespread nature of use of Complainants’ famous mark permits the inference that Respondent was aware of Complainants’ famous mark prior to registering the disputed domain names. 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).

Also, Respondent’s registration of the disputed domain names, which are comprised primarily of Complainants’ famous mark, establishes Respondent’s intent to create a likelihood of confusion with Complainants’ mark as to the source sponsorship, affiliation, or endorsement of its web sites. 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 the disputed domain names 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 names, urn2victoriassecret.com and urn2victoriassecrets.com, be transferred from Respondent to Complainant.