DECISION

V Secret Catalogue, Inc. v. Azra Khan

Claim Number:  FA0403000244737

PARTIES

Complainant is V Secret Catalogue, Inc. (“Complainant”), represented by Melise Blakeslee, of McDermott, Will & Emery, 600 13th Street, N.W., Washington, DC 20005.  Respondent is Azra Khan (“Respondent”), P.O. Box 382, Rawalpindi, 46000, Pakistan, 47-5012.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <victoriassectret.com> and <victoriasscret.com>, registered with Iholdings.com, Inc.

PANEL

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

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 9, 2004; the Forum received a hard copy of the Complaint on March 11, 2004.

On March 11, 2004, Iholdings.com, Inc. confirmed by e-mail to the Forum that the domain names <victoriassectret.com> and <victoriasscret.com> are registered with Iholdings.com, Inc. and that Respondent is the current registrant of the names. Iholdings.com, Inc. has verified that Respondent is bound by the Iholdings.com, Inc. 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 March 15, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 2004 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@victoriassectret.com and postmaster@victoriasscret.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 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <victoriassectret.com> and <victoriasscret.com> domain names are confusingly similar to Complainant’s VICTORIA’S SECRET mark.

2. Respondent does not have any rights or legitimate interests in the <victoriassectret.com> and <victoriasscret.com> domain names.

3. Respondent registered and used the <victoriassectret.com> and <victoriasscret.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant claims rights in the VICTORIA’S SECRET mark, which has been adopted and continually used in commerce by Complainant, its licensees, and predecessors since at least as early as June 12, 1977. The mark is used in connection with the sale of, inter alia, women’s lingerie, beauty products, outerwear, and gift items.

In addition, Complainant has used the VICTORIA’S SECRET mark as the name of over 1000 of Complainant’s stores located throughout the United States.  Complainant also uses the mark in conjunction with international mail order catalog sales and Internet commerce through Complainant’s website at the <victoriassecret.com> domain name. 

In February 1999, Complainant launched the first live Internet fashion show under the VICTORIA’S SECRET mark and name, which attracted a then-record 1.5 million reported website visitors to a single live broadcast.  On May 18, 2000, the previous record was exceeded by Complainant’s second annual online fashion show that attracted more than 2 million visitors from over 140 countries.  In 2002, the products offered under the VICTORIA’S SECRET mark reached $3.58 billion in sales.

Complainant owns numerous valid registrations for the VICTORIA’S SECRET mark with the United States Patent and Trademark Office (“USPTO”), including registration numbers 1,146,199 (registered on Jan. 20, 1981), 1,179,309 (registered on Nov. 24, 1981), 1,224,782 (registered on Jan. 25, 1983), 1,924,706 (registered on May 3, 2001), 1,908,042 (registered Apr. 28, 2001), 1,935,346 (registered on Apr. 21, 2001), and 2,099,903 (registered on Aug. 5, 1997). 

Respondent registered the disputed domain names <victoriassectret.com> and <victoriasscret.com> on January 14, 2002 and January 10, 2002, respectively.  Respondent uses the domain names to direct Internet users to the <gotoo.com/treasure/underwear.htm> domain name, which in turn hosts a page under the title “adameve.com.”  The latter page sells bras, panties, underwear and hosiery. 

Previously, Respondent used the <victoriasscret.com> domain name to promote a casino website.  Upon entering the attached website, Internet users were confronted with advertisements.  Upon attempting to exit the advertisements, users were redirected to an online lingerie website owned by Frederick’s of Hollywood, a competitor of Complainant.

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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

(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.

Identical and/or Confusingly Similar

Complainant has established rights in the VICTORIA’S SECRET mark via its numerous registrations for the mark with the USPTO and its continuous use of the mark in commerce.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law.”).

The inclusion of a third-party’s mark within a domain name is a determining factor for purposes of analyzing whether or not a domain name is confusingly similar to a trademark or service mark that a third-party has rights in.  The addition of a single letter to a mark fails to adequately distinguish a domain name from the mark under Policy ¶ 4(a)(i).  In this case, Respondent’s domain name, <victoriassectret.com>, includes Complainant’s VICTORIA’S SECRET mark in its entirety.  Respondent has merely added the single letter “t” to Complainant’s mark. See Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Reuters Ltd. 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); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that Respondent's <marrriott.com> domain name was confusingly similar to Complainant's MARRIOTT mark because "Respondent's typosquatting, by its definition, renders the domain name confusingly similar to Complainant's mark."); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that Respondent’s domain name, <americanonline.com>, is confusingly similar to Complainant’s famous AMERICA ONLINE mark).

Likewise, the removal of a single letter from a third-party’s mark in a domain name fails to sufficiently distinguish a domain name from the mark under Policy ¶ 4(a)(i).  In this case, Respondent has merely omitted the first letter “e” from Complainant’s VICTORIA’S SECRET mark in the <victoriasscret.com> domain name. See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the 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).

Moreover, the removal of punctuation from a third-party’s mark in a domain name is irrelevant under the Policy.  Here, Respondent has simply omitted the apostrophe in Complainant’s VICTORIA’S SECRET mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).

The disputed domain names, <victoriassectret.com> and <victoriasscret.com>, are confusingly similar to Complainant’s VICTORIA’S SECRET mark.  Thus, Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not responded to the Complaint.  Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names through its failure to rebut Complainant’s assertions. See 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 interests in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

In conjunction with the above, there is nothing in the record that indicates Respondent is commonly known by the disputed domain names <victoriassectret.com> and <victoriasscret.com>.  Indeed, the domain names do not contain coherent words, other than the name “Victoria,” and therefore are not associated with any particular meaning relating to Respondent. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Rights and legitimate interests in domain names have not been found when a respondent uses names that are confusingly similar to a third-party’s mark and hosts content that competes with the goods or services offered by the third-party under its mark. Here, Respondent is using the confusingly similar domain names, <victoriassectret.com> and <victoriasscret.com>, to sell bras, panties, underwear and hosiery.  These items are sold in direct competition with Complainant’s goods offered under its VICTORIA’S SECRET mark. Thus, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Respondent has no rights or legitimate interests in the disputed domain names.  Thus, Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

As previously stated, the disputed domain names do not contain coherent words, other than the name “Victoria.” The only way to extract meaning from the domain names <victoriassectret.com> and <victoriasscret.com> is if the names are viewed in light of Complainant’s VICTORIA’S SECRET mark. The omission or addition of a single letter in the respective domain names would create meaning in the domain names. Unfortunately for Respondent, that meaning is tied to Complainant’s VICTORIA’S SECRET mark. Respondent registered not one, but two domain names that contain illogical words.  By an amazing happenstance, both names are nearly identical to Complainant’s VICTORIA’S SECRET mark. The Panel finds the exceptional nature of such a fluke as evidence that the registrations were no flukes at all.  The Panel finds that Respondent not only knew of Complainant’s rights in the VICTORIA’S SECRET mark, but chose to disregard them. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

Respondent is offering goods for sale that directly compete with Complainant’s business.  This alone would be insufficient for a finding of bad faith.  However, Respondent is selling these goods at domain names that are confusingly similar to Complainant’s VICTORIA’S SECRET mark. These facts establish that Respondent registered the domain names primarily for the purpose of disrupting the business of Complainant, who is a competitor of Respondent. Thus, Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Consistent with the preceding analysis, the disputed domain names have also been registered and are being used in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s VICTORIA’S SECRET mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

Therefore, Respondent has registered and used the disputed domain names in bad faith.  Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <victoriassectret.com> and <victoriasscret.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  April 23, 2004

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