Generic Top Level Domain Name (gTLD) Decisions

Complainant is Victoria's Secret et al, Reynoldsburg, OH, USA ("Complainant") represented by Lisa A. Dunner, of McDermott, Will & Emery. Respondent is Sherry Hardin, Houston, TX, USA ("Respondent").

The domain name at issue is "bodybyvictoria.com" registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2001; the Forum received a hard copy of the Complaint on February 21, 2001.

On February 23, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "bodybyvictoria.com" is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@bodybyvictoria.com by e-mail.

On March 16, 2001, the Forum received from Respondent a request for extension of time to respond to the Complaint. Respondent requested 60-90 additional days to respond.

On March 21, 2001, the Forum replied to Respondent indicating that Respondent’s request for an extension was incomplete because (1) no more than 20 additional days can be requested and (2) Respondent did not submit the appropriate extension fee. Respondent was informed that if these deficiencies were not corrected or a formal response was not received by the deadline, the case would proceed as a default. Nothing further was ever received from Respondent.

Having received no formal 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 29, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed the Hon. James A. Carmody 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.

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent failed to present any formal response to the Panel.

This Complaint is based upon the trademark BODY BY VICTORIA, which is registered with the United States Patent and Trademark Office, and has been adopted and continually used in commerce by the Complainants since at least as early as 1998 in connection with the sale of women's lingerie, swimwear, personal care products and clothing. The mark BODY BY VICTORIA is registered under two valid and subsisting registrations with the United States Patent and Trademark Office, and is the subject of two federal trademark applications that are currently pending before the United States Patent and Trademark Office.

The BODY BY VICTORIA Mark is used to identify the BODY BY VICTORIA collection of fashionable clothing, lingerie and other related products, marketed and advertised by the Complainant in over 900 Victoria's Secret retail stores located throughout the United States. Complainant also uses the BODY BY VICTORIA Mark in conjunction with international mail order catalogue sales and Internet commerce through the Complainant’s web site, located at <victoriassecret.com>.

Respondent registered the domain name on October 19, 1999, shortly after Complainant launched a nationwide advertisement campaign using the BODY BY VICTORIA as one of the campaign's key slogans.

After it was discovered that Respondent registered the "bodybyvictoria.com" domain name, Complainant sent two cease and desist letters, informing Respondent that the BODY BY VICTORIA was a registered Mark of the Complainant and requesting that Respondent cancel her registration of the domain name or assign the domain name to Complainant.

Respondent failed to answer these letters. Instead, on May 24, 2000, Complainant’s counsel received an e-mail from Mr. Rick Sauter at bigricks@pdq.net, who identified himself as the Respondent’s roommate. Mr. Sauter informed Complainant’s counsel that Respondent would prefer to resolve the conflict outside of the court and indicated that Respondent would respond within two weeks. However, Mr. Sauter did not follow-up after this e-mail, and no other response to Complainant’s demand letters was received.

Respondent has made no use of the domain name or corresponding website.

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

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Respondent's registered domain name, "bodybyvictoria.com" is identical to the Complainant’s BODY BY VICTORIA Mark. See American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks); Brookfield Communications, Inc. v. West Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036, 1055 (9^th Cir. 1999) (differences between the domain name "moviebuff.com" and the mark "MovieBuff" are inconsequential).

Therefore, the elements of Policy ¶ 4(a)(i) have been satisfied.

While the burden of proof is on the Complainant, Paragraph 4(c) of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the domain name. The paragraph sets out a non-exclusive list of circumstances which will establish the relevant rights and/or legitimate interests of the Respondent. In Respondent’s brief correspondence with the Forum, Respondent failed to articulate any rights or legitimate interest Respondent has in the domain name "bodybyvictoria.com." See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) ("By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name").

Upon information and belief, Respondent is not and has never been commonly known by the domain name "bodybyvictoria.com," either as a business, an individual, or an organization. Policy ¶ 4(c)(ii).

Respondent does not use this domain name in connection with a bona fide offering of goods or services. Policy ¶ 4(c)(i). The domain name "bodybyvictoria.com" does not resolve to a web site or other lawful Internet presence. See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Respondent is not making a noncommercial or fair use of the domain name. Policy ¶ 4(c)(iii).

As to the second requirement, the Panel is satisfied that the Respondent has no legitimate interest in the domain names.

In light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name. Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Ironically, Respondent registered the identical domain name shortly after Complainant launched a wide-spread marketing campaign in connection with the BODY BY VICTORIA Marks. There is no reasonable possibility that Respondent selected the domain name at random. Rather, Respondent registered the domain name to infringe upon Complainant’s famous marks. See Dr. Karl Albrecht v. Eric Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) ("The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.")

Respondent has failed to provide any evidence of past or contemplated good faith use of the domain name and upon information and belief there is no evidence that Respondent has ever been involved in electronic commerce or other lawful use of the web, other than as an Internet user. Under certain facts and circumstances even inaction can constitute "bad faith" use of a domain name. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that passive holding of a domain name is use of the domain name in bad faith).

Taking into consideration all the circumstances, including the timing of the domain name registration, which coincided with the launch of the Complainant’s nationwide marketing and advertisement program, "[i]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law." Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

Based on the above, the Panel concludes that the elements of Policy ¶ 4(a)(iii) have been satisfied by Complainant.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "bodybyvictoria.com" be transferred from the Respondent to the Complainant.