V Secret Catalogue, Inc., Victoria's Secret Catalogue, Inc., Victoria's Secret Stroes, Inc. v Internet Investment Fund Trust " In Trust"

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

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

COMPLAINANT,

vs.

Internet Investment Firm Trust "In Trust"
RESPONDENT.

PANEL DECISION
Forum File No: FA0003000094344

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (Policy). A three person administrative panel was requested; this panel consists of James Alan Crary, Ojai, California, Chairperson; Nelson A. Diaz, Philadelphia, Pennsylvania, and Robert Merhige, Richmond, Virginia. Each Panelist confirmed to the National Arbitration that he or she had no known conflicts of interest and acted impartially and independently in considering the matter. A draft panel decision was prepared by the Chairperson and forwarded to the Panelist for their review, comment, and revision. Their suggestions were reflected in the decision.

For the reasons explained below, the Panel reached the conclusion that the domain name should be transferred to the Complainant.

PROCEDURAL FINDINGS

1. Domain Name: victoriasecret.com

2. Domain Name Registrant: Network Solutions

3. Date of Domain Name Registration: March 10, 1999

4. Date Administrative Proceeding Commenced: March 24, 2000

5. Date Response Due: April 14, 1999. (No Response Filed.)

THE COMPLAINT

The Complainant is the owner of the trademark and service mark VICTORIA’S SECRET and variations of thereof which were adopted and used in commerce, by Complainant and it’s predecessors since June 12, 1977, in connection with the sale of women’s lingerie, beauty products, outer ware and gift items.

The VICTORIA’S SECRET mark is used in connection with 800 Victoria’s Secret retail stores located in the United States offer items for sale bearing the Victoria’s Secret mark.

The Victoria’s Secret mark is also used in conjunction with international mail order, catalog sales and internet commerce through the Complainant’s website located at www.victoriassecret.com.

The Victoria’s Secret mark is registered in the United States trademark Patent Office under 14 existing registrations with approximately 20 registration applications pending which contain the VICTORIA’S SECRET mark and variations thereof.

Complainant maintains that the victoriasecret.com domain name utilized by Respondent is nearly identical and confusing similar to Complainant VICTORIA’S SECRET mark, and domain name victoriassecret.com. Respondent created a likelihood of confusion with the Complainant mark as to the source, sponsorship of affiliation or endorsement of the Respondent’s website or product sold on the website, and thus Respondent was likely to misleadingly divert web users trying to locate the legitimate VICTORIA’S SECRET website.

By letters of October 19 and November 3, 1999, Complainant requested that Respondent cancel its registration of the domain name with Network Solutions, Inc., or assign the domain name to the Complainant. Respondent failed to answer these letters.

It was further maintained Respondent was not commonly known by the name victoriasecret.com. Respondent did not currently have an active website at the domain name victoriasecret.com. Until suspended victoriasecret.com linked web users to a site entitled "Vote with your feet" which marketed immigration services. The Complainant notified Respondent’s Internet service provider (ISP) of its rights to the trademark VICTORIA’S SECRET, and the domain name was suspended.

The Complainant maintained that on a typical day there are 5-10,000 web users were visiting their official site. It was estimated that up to 25% of the users misspell the VICTORIA’S SECRET trademark when attempting to enter Complainant’s mark as a search string. Statistics compiled by the Complainant indicated that each day thousands of users omitted the possessive "s" from Victoria’s, by incorrectly spelling Complainant mark.

It was maintained Respondent’s registration of victoriasecret.com is likely to misleadingly divert web users trying to locate the legitimate Victoria’s Secret website, thus to tarnish and disparage the reputation and goodwill associated with VICTORIA’S SECRET mark and dilute the mark by frustrating web users trying to conveniently locate Complainant’s website victoriassecret.com.

The Complainant sought to have the domain name victoriasecret.com transferred to the Complainant.

DISCUSSION

According to the Policy section 4(a), to be entitled to cancellation or transfer of a domain name, the Complainant must prove the disputed domain name:

(1) Is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(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.

The Complainant must prove each of the three elements is present.

In those cases where there is no response filed to the complaint, the Rules at 5(e) and 14(a) provide that the Panel may proceed to decision based on the complaint, except in cases where there are exceptional circumstances.

Based on the complaint, the Panel concluded the domain name victoriasecret.com is confusingly similar to Complainant trademark, VICTORIA’S SECRET in which the Complainant has rights. The Respondent’s domain name simply omits the possessive "s". Accordingly Complainant has established the first of the three criteria.

Unfavorable inferences were drawn with regard to Respondent rights and legitimate interests in the domain name victoriasecret.com. This was based on Respondent’s default in answering the complaint and also based on the Complainants assertion that Respondents failed to answer Complainant letters seeking transfer of the domain name. (Rules 5(e) and 14(a)(b) )

The evidence supported a finding that the Respondent had no rights or legitimate interest in the domain name due to the Complainant long prior use of its mark. It was also concluded Respondent used the domain name with the intent and purpose of creating the likelihood of confusion by trading on Complainant goodwill and reputation. Further, that Respondent continued to do so until Complainant had Respondent’s domain name suspended by complaining to the Internet Service Provider (ISP).

Rule 4(b) describes the various particular circumstances "without limitation" which if found by the Panel shall be deemed evidence of bad faith registration and use.

Based on the complaint and supporting documents, and the Respondents default in responding to the complaint, it was concluded that the domain name victoriasecret.com was registered and used in bad faith. It was particularly concluded that:

(1) Respondent registered victoriasecret.com as a magnet to attract web users seeking Complainant’s products and services and to divert them to its web site which offered immigration services, totally unrelated to its victoriasecret.com name.

(2) Respondent created the likelihood of confusion with Complainant’s work as to the products or services on Respondent’s website. The evidence indicated that daily thousands of web users seeking Complainant’s products and services misspell the name by omitting the possessive "s", resulting in a like number of users being diverted to Respondent’s "Vote With Your Feet" immigration site.

DECISION

Based on the above findings and conclusions, and pursuant to Rule 4(i), it was ordered as follows:

That the domain name victoriasecret.com be transferred to the Complainant.

Dated May 9, 2000

Panel: Honorable James A. Crary

Honorable Robert R. Merhige

Honorable Nelson A. Diaz