Generic Top Level Domain Name (gTLD) Decisions

Complainants are Victoria's Secret et al., Columbus, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. Respondent is Victoria Summers, Santa Rosa, CA, USA ("Respondent").

The domain name at issue is "victoriassecretshop.com" registered with Dotster.

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. Carolyn Marks Johnson sits as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 22, 2001; the Forum received a hard copy of the Complaint on March 23, 2001.

On April 2, 2001, Dotster confirmed by e-mail to the Forum that the domain name(s) "victoriassecretshop.com" is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by t he Dotster 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 April 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Responden t 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@victoriassecretshop.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 April 26, 2001, pursuant to Complainants' request to have the dispute decided by a single-member Panel, the Forum appointed 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 reaso nably 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 p rinciples of law that the Panel deems applicable, without the benefit of any Response from Respondent.

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

A. Complainants allege the following:

B. Respondent has not submitted a response in this matter.

Complainants, Victoria's Secret entities have used their famous VICTORIA'S SECRET mark continuously since 1977 in connection with the sale of women's lingerie, beauty products, outerwear, as well as gift items. Currently, 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, victoriassecre t.com.

In 1999, Complainants sold $2.94 billion of merchandise bearing or in connection with their famous mark. Complainants maintain prominent advertisement campaigns that have succeeded in catapulting their mark, and family of marks, into the realm of one o f 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 their famous mark.

Respondent is not using the disputed domain for any purpose. On February 1, 2001, Complainants sent Respondent a Cease and Desist letter via e-mail and certified mail, informing Respondent that its domain name infringes upon Complainants' trademark rig hts, to no avail. To date, Respondent has not used the disputed domain name for any purpose.

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:

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

Under the Policy, Complainants must demonstrate rights in the mark, and that the domain name at issue is identical or confusingly similar to that mark. Here Complainants have done so.

Complainants' rights are evidenced by their registered mark, VICTORIA'S SECRET. Respondent's domain name, victoriassecretshop.com, is comprised of Complainants' mark and a generic term. Under such circumstances, a disputed domain name is confusi ngly similar to a Complainant's well-established mark. See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant's registered mark "llbean" does not circum vent the Complainant's rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive w ord...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).

Moreover, the disputed domain name here is so confusingly similar that a reasonable Internet user would assume that the domain name is somehow associated with Complainants' famous mark. 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 relationsh ip would exist).

The Panel finds that the disputed domain name is identical to and confusingly similar to Complainants' well-know mark. Policy ¶ 4(a)(i).

Complainants have established rights in the well-known Victoria's Secret mark. Respondent has not shown that Respondent is commonly known by the disputed domain name and Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. See 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 n ames 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); see also Broadcom Corp. v Intellifon e Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Further, Respondent asserted no rights to or legitimate interests in the disputed domain name, a circumstance which entitles the Panel to conclude that Respondent has no such rights or legitimate interests in the domain name. See Canadian Imperial B ank 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 t o 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 l egitimate interest in the Domain Names").

The Panel finds that Complainants have established rights in the mark contained within the domain name registered by Respondent and that Respondent has no rights to or legitimate interest in the mark. Policy ¶4(a)(ii).

The popularity of Complainants' famous mark supports the inference that Respondent was aware of the Complainants' famous mark prior to registering the disputed domain name. 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 conf usion that would inevitably follow if he used the domain names).

Also, Respondent's registration of the disputed domain name (comprised primarily of Complainants' mark) demonstrates Respondent's intent to create a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation or endorseme nt of Respondent's 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 t he 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).

Therefore, the Panel finds that the proof supports a finding that Respondent registered and used the domain name at issue in bad faith. Policy ¶ 4(a)(iii).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief should be and it is hereby granted.

Thus, it is Ordered that the domain name, victoriassecretshop.com, be transferred from Respondent to Complainant.