Generic Top Level Domain Name (gTLD) Decisions

The Complainants in this administrative proceedings are Victoria’s Secret Stores, Inc., Intimate Beauty Corporation, Victoria’s Secret Direct, LLC, Delaware corporations and limited liability companies having their principal place of business at Three Limited Parkway, Columbus, Ohio 43230, and V Secret Catalogue, Inc., a Delaware corporation having its principal place of business at 1105 North Market Street, Wilmington, Delaware 19801. Complainants are represented by Lisa Dunner, of McDermott, Will & Emery. The Respondent is Netchem, Inc., Milltown, NJ, USA ("Respondent").

The domain names at issue are "victoriassecre.com", "victoriassecrt.com" and "victoriasseret.com", registered with Bulkregister.com.

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.

Panelist is Judge Karl V. Fink (Retired).

Complainant 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 February 2, 2001, Bulkregister.com confirmed by e-mail to the Forum that the domain names "victoriassecre.com", "victoriassecrt.com", "victoriasseret.com" are registered with Bulkregister.com and that the Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com 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 12, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 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@"victoriassecre.com", "victoriassecrt.com", "victoriasseret.com" by e-mail.

A timely response was received on March 5, 2001.

Additional submissions from Complainant and Respondent were received. All submissions have been considered by the Panel.

On March 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

The Complainants request that the domain names be transferred from the Respondent to the Complainant, V. Secret Catalogue, Inc.

A. Complainant

The Complaint is based upon the famous trademark and service mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainants and their predecessors since June 12, 1977 in connection with the sale of, inter alia, women’s lingerie, beauty products, outerwear, and gift items.

Complainants use the famous mark VICTORIA’S SECRET as the name of their over 800 Victoria’s Secret retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA’S SECRET. Complainants also use the mark VICTORIA’S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainants’ website, located at victoriassecret.com.

The mark VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame as a means by which Complainants and their merchandise are known to the public and their source and origin are identified.

The mark VICTORIA’S SECRET is duly registered in the United States Patent and Trademark Office under seventeen valid, subsisting and uncanceled registrations, and V Secret Catalogue, Inc. is the owner thereof. Additionally, Complainant V. Secret Catalogue, Inc. has approximately twenty applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA’S SECRET and variations thereof.

The mark VICTORIA’S SECRET is prominently used on the Internet in connection with the world famous Victoria’s Secret online fashion shows.

Respondent’s registered domain names, are nearly identical to the Complainants’ mark VICTORIA’S SECRET, and the domain name used by the Complainants in connection with the legitimate sale of products bearing the mark VICTORIA’S SECRET, namely victoriassecret.com. The domain names are merely misspellings of Complainants’ mark.

By merely deleting one or two letters from Complainants’ famous mark, Respondent does nothing to prevent the likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or of a product on its web site, and is likely to misleadingly divert web users trying to locate the legitimate Victoria’s Secret web site.

Respondent is not using the domain names in connection with a bona fide offering of goods and services. See Policy, paragraph 4(c)(i).

Respondent is not commonly known by the domain names, either as a business, individual or other organization. See Policy, paragraph 4(c)(ii).

Respondent is not making a legitimate noncommercial or fair use of the domain names. See Policy, paragraph 4(c)(iii).

Respondent is aware of Complainants’ United States Patent and Trademark Registrations and the Complainants’ long-standing use of the mark VICTORIA’S SECRET, yet Respondent has refused to respond to Complainants’ letters or to transfer the domain names despite evidence of such trademark ownership.

Despite Complainants’ repeated requests, to date Respondent has failed to articulate any rights or legal interest it has in the domain names, nor is it possible to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate.

Respondent’s use of Complainants’ famous mark in its domain names demonstrates an intent to attract Internet users to its web sites by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of its web site. See Policy paragraph 4(b)(iv).

Respondent’s registration of three (3) domain names that are confusingly similar to the famous mark VICTORIA’S SECRET indicates a pattern of conduct that is demonstration of bad faith. See Policy Paragraph 4(b)(ii).

In addition, Respondent’s registration violates Section 43(d)(1) of the United States Trademark Act, amended by Public Law 106-113 (November 29, 1999).

B. Respondent

Netchem did not know Victoria’s Secret is a trademark when registering the domain names: victoriassecre.com, victoriassecrt.com and victoriasseret.com. There are so many trademarks in the world. It is impossible to know even a small percentage of the trademarks.

Netchem’s domain names: victoriassecre.com, victoriassecrt.com and victoriasseret.com. are different from the trademark Victoria’s Secret by more than six letters.

Netchem does not offer any services nor any product on the web site. There is no chance of causing any confusion with Complainants mark as to the source, sponsorship, affiliation or endorsement of Netchem’s web site, a blank page.

Respondent has registered more than 1000 domain names and is using them to monitor Internet traffic. The data is gathered for research purposes.

Netchem did not, does not and will not use the domain names victoriassecre.com, victoriassecrt.com and victoriasseret.com in bad faith. Netchem has a blank page in the web site for each domain name.

Netchem had carefully read the ICANN Policy before registering any domain names. Since Netchem intended to use all the domain names in good faith, Netchem did not thoroughly perform a trademark search for all the domain names registered. Netchem registered a domain name based on the number of hits obtained by searching the name on the Internet.

Complainants have proven all of the required elements of their claim as to each of the domain names.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

Identical and/or Confusingly Similar

Complainants own the registered mark VICTORIA’S SECRET, which it has been used in commerce since June 12, 1977. Additionally, Complainants use the domain name victoriassecret.com for Internet commerce.

Respondent’s domain names: victoriassecre.com, victoriassecrt.com and victoriasseret.com are confusingly similar because each domain name only differs from Complainants’ mark by dropping one or two letters. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); see also Reuters Limited v Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).

The domain names are common misspellings of Complainants’ domain name and mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, "davemathewsband.com" and "davemattewsband.com", are common misspellings and therefore confusingly similar).

Respondent had no right to register a domain name that is confusingly similar to Complainants’ mark for research. Therefore, Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(c). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ("merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy").

Respondent is not using the domain names in connection with a legitimate noncommercial or fair use without intent for commercial gain. Respondent admits that the web sites associated with the domain names are blank pages. See Flor-Jon Films, Inc. v. Larson, FA 94974 (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); Ziegenfelder Co. v. VMH Enterprises, Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the said domain name).

Respondent is not commonly known by the names "victoriassecre", "victoriassecrt" or "victoriasseret". See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1)Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Complainant has proven this element.

Respondent registered the domain names at issue to intentionally attract, for commercial gain, Internet users to its web site, or other online location, by creating a likelihood of confusion with Complainants’ well-established mark as to the source, sponsorship, affiliation and endorsement of Respondent’s 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 VICTORIA’S SECRET mark is so famous that the Respondent had to have been aware of Complainants’ mark prior to registering the domain names at issue. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

Complainant has proven this element.

Complainants 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.

The panel directs that the domain names "victoriassecre.com", "victoriassecrt.com" and "victoriasseret.com" be transferred to Complainant, V. Secret Catalogue, Inc.

Honorable Karl V. Fink

Arbitrator

Dated: April 2, 2001