P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com


V Secret Catalogue, Inc.,
Victoria’s Secret Catalogue, Inc.,
Victoria’s Secret Stores, Inc. and Intimate Brands, Inc.
d/b/a Victoria’s Secret Beauty

COMPLAINANTS,

VS.

ARTCO, Inc.

RESPONDENT.

DOMAIN NAME DISPUTE DECISION
Forum File No.: FA 94342

___________________________________________

  The above entitled matter came on for an administrative hearing on May 5, 2000 before a three judge panel on the Complaint of the above named Complainants, against ARTCO, Inc, hereafter "Respondent". Complainants are represented by Melise Blakeslee, McDermott, Will & Emery, 600 13th Street, N.W., Washington, D.C. 20005. Howard Goldberg, 40 Tillman Street, Westwood, New Jersey, 07675 represented the Respondent. Upon the written submitted record, the following DECISION is made:  

PROCEDURAL FINDINGS
Domain Name: Victoriassecrets.net
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: ARTCO, Inc.
Date of Domain Name Registration: June 30, 1999
Date Complaint Filed: March 23, 2000
Due Date for a Response: April 13, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a)l and Rule 4(c): March 24, 2000

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 24, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified the above Registrar, Network Solutions, the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainants that the administrative proceeding had commenced. Respondent did submit a response to The Forum. On June 30, 1999, Respondent registered the domain name "Victoriassecrets.net" with Network Solutions, the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy. Complainants filed a Motion to File a Rebuttal to Respondent’s Reply to Complaint, Respondent requested the panel accept the Complainants’ Motion for Rebuttal and also accept the Respondent’s Response to the Rebuttal. The panel has accepted and considered Complainants’ Rebuttal to Respondent’s Reply to Complaint and Respondent’s Response to Complainants’ Rebuttal. Complainants have requested a panel of three arbitrators which has been appointed by the National Arbitration Forum. The panelists have no known conflict of interest.

FINDINGS OF FACT

1.      V Secret Catalogue, Inc. is the United States record owner of the VICTORIA’S SECRET Trademarks and Service Marks which it licenses to the other Complainants.

2.      The Complaint is based upon the Trademark and Service Mark VICTORIA’S SECRET and variations thereof, which have been adopted and continually used in commerce by the Complainants and predecessors since June 12, 1977 in connection with the sale of various items including, women’s lingerie, beauty products, outerwear, and gift items.

3.      Complainants use the famous VICTORIA’S SECRET Mark as the name of its over 800 Victoria Secrets retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the VICTORIA’S SECRET Mark. Complainants also use the VICTORIA’S SECRET Mark in conjunction with international mail order catalogue sales and Internet commerce throughout the Complainants’ web site, located at

www.victoriassecret.com

.

4.      As a result of this widespread, long-time, continuous, and prominent use of the VICTORIA’S SECRET Mark, the VICTORIA’S SECRET Mark 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.

5.      Respondent’s registered domain name, victoriassecrets.net, is nearly identical to and confusingly similar to the Complainants’ VICTORIA’S SECRET Mark and the domain name used by Complainants in connection with the legitimate sale of products bearing the VICTORIA’S SECRET Mark, namely victoriassecret.com.

6.      By merely adding an "s" to the Complainants’ registered Mark, Respondent’s domain name creates a likelihood of confusion with the 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 Complainants’ legitimate VICTORIA’S SECRET web site.

7.      ARTCO is not commonly known by the domain name, either as a business, individual, or other organization. When the Complaint was filed the domain name victoriasecrets.net routed web users to another web site owned by the Respondents, heartsarewild.com, which offers for sale women’s lingerie products. Respondent states that this routing has now been changed.

8.      No evidence has been presented that Respondent has any right or legitimate interest to the domain name as provided in Rule 4(c).

9.      Complainants’ prayer for relief requests that the domain name be transferred to V. Secret Catalogue, Inc.

CONCLUSIONS
To obtain relief under paragraph 4(a) of the Policy, the Complainants must prove each of the following:

    1. The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
    2. The Respondent has no right or legitimate interest in the domain name; and
    3. The domain name has been registered and used in bad faith.

Similarity Between Registrant’s Domain Name and Complainants’ Service Mark. The domain name registered by Respondent is confusingly similar to or identical to the registered service mark owned by Complainants. The addition of "s" and distinction between .net and .com is not significant in determining similarity. The panel finds that the domain name is identical to or confusingly similar to Complainants’ registered service mark. Respondent’s Rights or Legitimate Interest in the Domain Name. Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

    1. Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
    2. An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
    3. Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Respondent has made no showing with respect to any of the above factors. The panel finds that Respondent has no rights or legitimate interest in the domain name. Respondent’s Bad Faith Registration and Use of the Domain Name. Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

    1. Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;
    2. A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
    3. Registration of the domain name for the purpose of disrupting the business of a competitor; or
    4. Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location by creating a likelihood of confusion with the trademark owner’s mark.

The Panel finds Respondent registered and used the domain name in bad faith as evidenced by circumstances indicating that Respondent registered and acquired the domain name for the purpose of disrupting the business of a competitor and to attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark. Under ICANN’s Uniform Domain Name Dispute Resolution Policy Complainants have proven that the domain name should be transferred to Complainants.

DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided by the panel as follows: THE PANEL DIRECTS AS REQUESTED BY COMPLAINANTS THAT THE DOMAIN NAME "victoriassecrets. net" REGISTERED BY RESPONDENT BE TRANSFERRED TO COMPLAINANT, V SECRET CATALOGUE, INC.

Panel: Honorable James A. Carmody Honorable Carolyn Marks Johnson Honorable Karl V. Fink

Dated: May 9, 2000