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 National Rag, Burbank, CA, USA ("Respondent") represented by Gene Girard.

The domain name at issue is "victoriassecretexposed.com", registered with Tucows.

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.

The Panelist is Judge Karl V. Fink (Retired).

Complainants submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 23, 2001; the Forum received a hard copy of the Complaint on January 23, 2001.

On January 30, 2001, Tucows confirmed by e-mail to the Forum that the domain name "victoriassecretexposed.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 19, 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@victoriassecretexposed.com by e-mail.

Respondent requested an extension of twenty days to respond to the Complaint. The Forum granted a twenty day extension, setting a deadline of March 12, 2001.

A timely response was received on March 12, 2001. Thereafter, Complainants submitted a Supplemental Statement. Respondent has submitted a Reply to Complainants’ Supplemental Submission. All submissions have been considered by the Panel.

On March 21, 2001 pursuant to Complainants’ 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 name 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 name is confusingly similar 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.

By merely adding the generic word "exposed" to the end of the 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. Therefore, Respondent’s domain name is likely to misleadingly divert web users trying to locate the legitimate Victoria’s Secret web site.

Respondent is not using the domain name 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 name, 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 name. 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 name 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 name, nor is it possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.

Respondent’s use of Complainants’ famous mark in its domain name demonstrates an intent to attract Internet users to its web site 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).

Simply adding the generic word "exposed" to the famous mark VICTORIA’S SECRET does not mitigate the bad faith associated with registering a domain name.

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

B. Respondent

Particularly with reference to lingerie, Respondent does not dispute that VICTORIA’S SECRET is a famous mark.

Complainants rely upon prior ICANN decisions that appear to establish a "bright line" test that finds confusingly similar any domain name that consists of any mark combined with any other word. Respondent contends that these decisions are wrongly decided. Are inapplicable to the particular facts of this case, and lead to absurd results.

Respondent concedes that Respondent is not using the domain name in connection with the offering of any goods or services or any commercial use.

Respondent concedes that Respondent is not known by the domain name at issue because Respondent is using the domain name solely in connection with exercising freedom of speech rights in criticizing and commenting upon the corporate activities of Complainants.

Respondent has attached the entire content of the victoriassecretexposed.com web site, which demonstrates fair use and established Respondent’s rights and legitimate interest in the domain name victoriassecretexposed.com.

The domain name is used as an expose of Victoria’s Secret corporate activities, a well-known and well-regarded Internet activity similar to the domain name and web site ICANNwatch.com and saturnexposed.com.

Complainants cannot establish that Respondent is attempting to attract in an improper manner Internet users for commercial gain because Respondent is making no commercial use of the disputed domain name.

Complainants’ assertion that Respondent’s registration of victoriassecretexposed.com violates certain provisions of the United States Trademark Act, is beyond the scope of the arbitration.

Respondent contends that when its domain name is not analyzed by a mechanical test that simply inquires whether Complainants’ mark comprises a portion of the disputed domain name and, instead, looks at how Internet users actually navigate or search for a famous mark no confusion is possible.

Respondent further contends that it has a legitimate interest in exercising its right of free speech in criticizing Complainants’ corporate policies and that the law is well-established that such criticism cannot logically take place without identifying Complainants by their mark.

Finally, Respondent contends its actual use of the disputed domain name refutes Complainants’ contention that the domain name was registered and is being used in bad faith.

Victoria’s Secret mark is so well known that an Internet user seeking its web site will merely enter victoriassecret.com into their web browser and will go directly to Victoria’s Secret web site. It is unreasonable to believe that an Internet user would attempt to navigate to Complainants’ web site by explicitly entering victoriassecretexposed.com instead of victoriassecret.com.

The official web site for Victoria’s Secret will always be displayed first in most search engines.

Any "confusing similarity" between the domain names victoriassecret.com and victoriassecretexposed.com is wholly illusory. No Internet user will be confused by the existence of the domain name victoriassecretexposed.com.

The content of Respondent’s web site is protected by the First Amendment. Numerous cases hold that consumer commentary is core speech protected by the First Amendment. Complainants seeks to utilize these proceedings to quash criticism of its corporate policies.

Respondent anticipates that Complainants will argue that Respondent’s web site content was not posted until after the commencement of these proceedings. This argument is unavailing. Respondent’s content has been extant on its web site throughout the vast majority of the pendency of these proceedings.

Complainants set forth no facts whatsoever or even allegations of registration and use in bad faith.

The Policy provides for specific circumstances which, if found by the Panel to be present, "shall be evidence of the registration and use of the domain name in bad faith." There is no evidence of any of those circumstances.

Complainants’ "evidence" of bad faith registration and use is nothing more than naked allegations that will not support a finding by this Panel. Moreover, actual evidence presented by Respondent of the entirety of its contents refutes any inference of bad faith.

Complainants have failed to comply with the formal requirements of presenting to this Panel evidence of the essential three elements, trademark confusion, lack of rights and legitimate interests, and bad faith, necessary to sustain a prima facie claim for relief under the Policy. Respondent, despite that it has no burden, has presented affirmative evidence sufficient to defeat Complainants’ request for transfer of Respondent’s domain name. Complainants do not seek to have the domain name victoriassecretexposed.com transferred to them so that they may utilize it. Instead, they seek to have it transferred to them so as to prevent any criticism of Complainants which is not an appropriate or permitted reason for transfer under the Policy.

C. Additional Submissions.

Complainant

Complainants have set forth the required evidence to establish a prima facie case for relief under the ICANN UDRP, which Respondent has failed to overcome. In fact, Respondent’s Response and conduct subsequent to the filing of the Complaint further underscores its bad faith registration and use of, and its lack of a legitimate interest in, the domain name at issue.

Respondent’s web site content was not posted until after the commencement of these proceedings.

Respondent originally registered the domain name on May 2, 2000. As of January 22, 2001, the date of which Complainants filed the Complaint against Respondent, Respondent’s web site did not contain any content.

After Complainant agreed to give Respondent an extension to respond to the Complaint, counsel for Complainants discovered that Respondent had posted the material currently present on its web site. Thus, Respondent waited more than nine months after registering the domain name to post any content on the site, which occurred only after receiving a Complaint and an extension of time in this matter. This delayed action is simply additional evidence of bad faith.

The Content itself is further evidence of Respondent’s bad faith. Every article posted in Respondent’s web site was "copied and pasted" in its entirely from unrelated third party sites.

When a web user attempts to click on the apparent hyperlinks contained within the text of Respondent’s web site, each link is a dead link.

Respondent contends, and Complainants acknowledge, that ICANN UDRP panels are not authorized to adjudicate liability for causes of action other than the cancellation or transfer of the domain name. However, given that the UDRP specifies that bad faith is not limited to the specific circumstances enumerated in Paragraph 4(b), certainly violations of United States Trademark and Copyright law may be considered as evidence of bad faith.

Respondent did not post this material because it has legitimate complaints or commentary about Victoria's Secret or its products, nor did it register and use the domain name as a forum to facilitate such protected activity. Victoria’s Secret is not trying to "quash criticism" of its corporate policies. Victoria’s Secret’s objections in this proceeding is that Respondent is using a domain name containing the mark VICTORIA’S SECRET to attract web traffic to a site that does not contain protected speech of Respondent, nor does it demonstrate a legitimate noncommercial or fair use.

Respondent does not, and cannot, justify its use of a domain name containing the famous mark VICTORIA’S SECRET to post copied content that more prominently refers to a plethora of other corporate and educational entities.

Respondent chose to post this content at one domain name containing a trademark proven to draw traffic on the Internet, which further demonstrates Respondent’s bad faith. Using the mark VICTORIA’S SECRET in conjunction with the word "exposed" certainly implies that Complainants’ world famous lingerie models may in fact be naked on the site. Given Respondent’s eleventh-hour creation of the content currently posted in the site, it is likely that Respondent has ulterior interests in this domain name that have yet to come to light.

Under Respondent’s theory, any time ownership of a domain name was challenged, all the registrant would need to do to overcome any allegations of bad faith would be to post some third-party commentary about the trademark holder on the site. If the Panel adopted Respondent’s "strict construction" of the UDRP, even the most egregious instances of registration and use in bad faith could effectively be immunized by post-Complaint actions.

By adding the generic word "exposed", Respondent’s web site is likely to enjoy enhanced traffic based on the dominant presence of the mark VICTORIA’S SECRET. Using the word "exposed" in connection with a mark famous for its use with supermodels and women’s lingerie will pique an even higher level of interest.

Respondent

When any one of the three circumstances set forth in the Policy, Paragraph 4(c), are found by the Panel to exist, such circumstances "shall" demonstrate the Respondent’s legitimate interests in the domain name and necessarily establishes an essential element of the Complaint in favor of Respondent and against Complainant and requires a decision in favor of the Respondent. The Policy does not require that Respondent’s use be before notice of the dispute.

The content of Respondent’s web site consists of criticism or commentary with respect to Complainants’ corporate policies. ICANN decisional authorities are well settled with respect to such domain name use.

Complainants offer no authority for the novel proposition that speech is only protected if it is original to the speaker.

Plain meaning of the Policy mandates a finding in favor of the Respondent because it is making non-commercial fair use of the web site under the disputed domain name. Respondent has demonstrated through a textual analysis of the language of the Policy that Complainants’ construction of the policy to require that such fair use begin before the commencement of these proceedings must be rejected.

Complainants have not proven all of the required elements of their claim They have not proven that the domain name was registered and used in bad faith.

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.

Complainants owns an U.S. Trademark Registration for its famous VICTORIA’S SECRET mark. The addition of a generic word to a mark held by another does not defeat Complainant’s rights in the mark. See Space Imaging LLC v. Brownwell, AF 0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name "casinoyahoo.com" is confusingly similar to Complainant’s mark); PG&E Corporation v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that "Respondent does not, by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant").

Complainants contend that Respondent has no rights or legitimate interests in the domain name. UDRP Panels have found no rights and legitimate interests in a domain name where Respondent is using the domain name to mislead and redirect Internet users. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where Respondent diverted Complainant’s customers to his websites).

Although Respondent has a right to comment on Complainants’ business practices, Respondent had no right to register a domain name that is confusingly similar to Complainants’ mark for that purpose, particularly, when the domain name could be interpreted to suggest a connection to Complainants’ business. Therefore, Respondent has no rights or legitimate interests in the domain name 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").

When the action was filed Respondent was not using the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. Respondent admits that the web site associated with the domain name was blank when the action was filed. 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).

Respondent contends that Complainants have not met its burden of proving that Respondent registered and used the domain name in bad faith. Respondent contends that it registered and used the domain name in good faith for the following reasons.

Although circumstances other than those stated in the policy can show bad faith, no such circumstances have been proven. Complainants’ suggestion that Respondent might have a planned use other than for commentary about Victoria’s Secret’s corporate policies have not been proven.

See generally Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent).

Complainants have not proven this element.

Complainants having failed to establish all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be denied.

The panel directs that the domain name "victoriassecretexposed.com", be retained by Respondent, National Rag.

Honorable Karl V. Fink

Arbitrator

Dated: April 3, 2001