National Arbitration Forum




Victoria's Secret Stores Brand Management, Inc. v. Alexandre Almeida

Claim Number: FA1001001304637



Complainant is Victoria's Secret Stores Brand Management, Inc. (“Complainant”), represented by Melise R. Blakeslee, of Sequel Technology & IP Law, LLP, Washington D.C., USA.  Respondent is Alexandre Almeida (“Respondent”), Brazil.



The disputed domain names are <>, <>, <>, and <>, all of which are registered with Fastdomain Inc. They are hereafter referred to collectively as “the disputed domain names”.



The undersigned, David H Tatham, 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.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 25, 2010; the Forum received a hard copy of the Complaint on January 26, 2010.


On January 25, 2010, Fastdomain Inc. confirmed by e-mail to the Forum that all of the disputed domain names <>, <>, <>, and <> were registered with it and that the Respondent is the current registrant of them.  Fastdomain Inc. also verified that Respondent is bound by its 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 February 4, 2010, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of February 24, 2010 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 by e-mail to,,, and


A timely Response was received and determined to be complete on February 24, 2010.


On March 4, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.



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



A. Complainant

Complainant is an indirect wholly owned subsidiary of Limited Brands, Inc. and it claims that the name VICTORIA’S SECRET is a famous trademark. Complainant states that this mark and variations thereof have been used continuously by it and its predecessors in business since June 1977 in connection with the sale of items such as women’s lingerie and other apparel, personal care and beauty products, swimwear and outerwear. VICTORIA’S SECRET is the name of over 1000 retail stores throughout the USA, and Complainant also advertises and sells a wide range of items bearing the various VICTORIA’S SECRET marks throughout the world. These sales are effected either through Complainant’s retail shops or via its main website located at <>. This domain name was registered on January 23, 1995. Complainant also uses the registered domain names <> and <> to direct traffic to its main website. Complainant also runs what it describes as “world famous online fashion shows” which, in the year 2000, was viewed by more than 2 million people from over 140 countries. It also hosts an annual network television Fashion Show.


In 2008 more than $5.6 billion of merchandise was sold in connection with or bearing the VICTORIA’S SECRET trademark and its variations. As a result of these sales and prominent advertising campaigns, Complainant contends that VICTORIA’S SECRET has acquired significant goodwill, wide public recognition, and fame, and has thereby become one of the world’s most recognized marks.


Complainant is the proprietor of the following trademarks all duly registered at the United States Patent & Trademark Office (“USPTO”) –


VICTORIA’S SECRET                                   1146199

VICTORIA’S SECRET                                   1908042

VICTORIA’S SECRET SPORT                      3693125

VICTORIA’S SECRET PINK                        3226760


MOOD BY VICTORIA’S SECRET               3126002

VICTORIA’S SECRET GARDEN                  3013385

VICTORIA’S SECRET HOME                      2994208

VICTORIA’S SECRET ESCAPES                 2861386

VICTORIA’S SECRET ANGELS                   3670768


VICTORIA’S SECRET PINK                        3502263

VICTORIA’S SECRET                                   3480533


VICTORIA’S SECRET SPA                           3426643

VICTORIA’S SECRET PINK                        3520974

VICTORIA’S SECRET PINK                        2820380

VICTORIA’S SECRET PINK                        2992758


VICTORIA’S SECRET Garden                     2165974

ANGELS BY VICTORIA’S SECRET            2168500


Complainant is also the owner of the following trademark applications all all of which contain the word VICTORIA



Complainant contends that the disputed domain names <>, <>, and  <> are confusingly similar to the above listed VICTORIA’S SECRET and VICTORIA  trademarks, because they all incorporate the mark VICTORIA’S SECRET (without its apostrophe or space which in any case cannot be contained in a domain name) merely adding the Portuguese words ‘fa’ (which means ‘fan’), or ‘Brasil’ (which is the Portuguese spelling of ‘Brazil’), or ‘vendo’ (which means ‘sales’). Complainant contends that the likelihood of confusion is heightened by the addition of these Portuguese words as consumers might believe that the disputed domain names could lead them to conclude that they are its own official site but directed in particular to Portuguese speakers and/or residents of Brazil.


Complainant further contends that the domain name <> incorporates the word VICTORIA which is a significant portion of its VICTORIA’S SECRET and VICTORIA trademarks as well as being confusingly similar to its domain names <> and <>.


In support of its contention that Respondent has no rights or legitimate interest in any of the disputed domain names, Complainant contends as follows –

·        that all of the disputed domain names resolve to a website at one of the disputed domain names, namely <>, which offers for sale what are purported to be its own VICTORIA’S SECRET products which, Complainant maintains, could be either or counterfeits;

·        that Respondent is neither affiliated with itself, nor has it been licensed to use its trademarks, nor is it an authorized dealer or reseller;

·        that Respondent is using the disputed domain names to confuse customers and to divert them from its own legitimate website for commercial gain., and that this is not a bona fide  offering of goods or services;

·        that Respondent is not commonly known by any of the disputed domain names either as a business, individual, or other organization, and that there is nothing in Respondent’s WHOIS information to imply that Respondent is commonly known by any of the disputed domain names;

·        that Respondent’s website is called “Victoria’s Secret – Fá” which clearly infringes the rights in its own VICTORIA’S SECRET trademarks and thus gives Respondent no rights in the disputed domain name <>;

·        that the disputed domain names were registered by Respondent thirty years after Complainant fist began using its VICTORIA’S SECRET trademark, more than ten years after it registered the domain name <>, and long after the name VICTORIA’S SECRET had become famous;

·        that Respondent is not making a legitimate non-commercial or fair use of any of the disputed domain names.


In support of its contention that the disputed domain names were registered in bad faith, Complainant contends as follows –

·        That Respondent is using its trademarks in the disputed domain names in order to drive traffic from its own website to Respondent’s website, on which apparently Complainant’s own goods are advertised but which in fact is unconnected with Complainant;

·        that Respondent registered the disputed domain names with the intention of attracting internet users to its site for commercial gain by creating a likelihood of confusion with Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain names and site. Thereby misleadingly diverting internet traffic from Complainant’s website to Respondent’s for commercial gain, all in violation of paragraph 4(b)(iv) of the Policy;

·        that there is nothing on Respondent’s website to indicate that it is not an authorized site run by or affiliated with Complainant and Respondent has made no effort to disclaim any relationship with Complainant or to advise visitors that Respondent is not authorized to sell genuine VICTORIA’S SECRET products;

·        that visitors may not only provide Respondent with their personal and credit  card information believing that the site is affiliated with Complainant, but they may also believe that they will receive genuine VICTORIA’S SECRET products ordered from the site – if indeed they are genuine products and not counterfeit;

·        that it is clear from Respondent’s website that Respondent was aware of Complainant’s famous trademark VICTORIA’S SECRET when it registered the disputed domain names and there is no reason for Respondent to have registered the disputed domain names other than to trade off the reputation and goodwill of Complainant’s mark. 


B. Respondent

Respondent’s Response came in the form of the following e-mail to the Forum –


“There are some misunderstood on Victoria's Secret Store complain.


1- The Domain came from Vitoria Régia that is a famous plant in North of Brazil (Amazon Region) as you can see on this link bellow:   Attach #1

Translating the domain from Portuguese to English will be   SELL VITORIA   (


2- The Domain came from the same legend and FA is typed as FÁ that is the nickname of my wife and not FÃ that means fan in English.


Based on these two arguments does not make sense to me in transfer the domains to Victoria's Secret Stores, what I would like to suggest is to keep these domains for 3 months (that is when expire the domain names) and then I can transfer it to Victoria’s Secret Stores. I´ll use this time to create a new domain and keep my traffic.”



Complainant is a well-established US corporation which has been trading for more than 30 years. It initially made its reputation selling women’s lingerie, but now sells other forms of women’s apparel, swimwear, and care and beauty products through more than 1000 stores in the US as well via its website and a mail order catalogue. It also organizes fashion shows both online and on television.


Respondent has provided no information about itself, but from copies of its website which were attached to the Complaint, it would appear to be an online seller of beauty products and accessories.



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.




Respondent has indicated in his short Response that he would be prepared to transfer the disputed domain names to Complainant but only after a period of three months. However he prefaces this offer by saying that a transfer “does not make sense to me”.


Faced with these two conflicting statements, the Panel has decided to follow the requirements of paragraph 15(a) of the Rules and to decide this Complaint on the basis of the statements and documents submitted by both parties, and as set out under “DISCUSSION” above.


Identical and/or Confusingly Similar


The first point to make is that Respondent has made no submissions under this heading.


Complainant has established, to the satisfaction of the Panel, that it has substantial rights in the name and trademark VICTORIA’S SECRET by virtue of several incontestable US trademark registrations. It also owns numerous other registrations of this mark combined with other English words such as LOOK, PINK, HOME, ANGELS, etc. This is sufficient proof for, as the Panel said in Expedia, Inc. v. Tan, FA 991075 (NAF June 29, 2007): “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”


Three of Respondent’s domain names <>, <>, and <> all contain the VICTORIA’S SECRET mark but minus the apostrophe and the space between the two words, and plus the gTLD ‘.com’, all in combination with other Portuguese words. Complainant has provided translations of these, alleging that ‘fa’ means ‘fan’ in English, that ‘Brasil’ is merely the Portuguese equivalent of the country which the English refer to as ‘Brazil’, while ‘vendo’ has no exact English translation although the closely associated word ‘venda’ means ‘sales’ in English.


It was held in LOreal USA Creative Inc v. – Smart Names for Startups, FA 203944 (NAF December 8, 2003) that the omission of an apostrophe did not significantly distinguish the domain name from the mark; while in American International Group, Inc. v. Domain Administration Ltd. c/o William Vaughan FA 1106369 (NAF December 31, 2007) it was said that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.” In Daedong-USA, Inc Kioti Tractor Division. v. O’Bryan Implement Sales, FA 210302 (NAF December 29, 2003) it was said that “Respondent's domain name, <>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”


However in this case, the above three disputed domain names are not identical to Complainant’s trademarks, they all contain additional matter.


It is well established that if a domain name is merely a combination of a common word and a Complainant’s trademark, this is sufficient for a finding of confusing similarity. See, for example, V Secret Catalogue, Inc. v. Wig Distributions FA301727 (NAF September 7, 2004) in which the Panel found that the domain name <> was confusingly similar to the trademark VICTORIA’S SECRET; see also Allianz of America Corporation v. Lane Bond FA 680624 (NAF June 2, 2006) in which it was found that the addition of the generic term ‘finance’ which described the Complainant’s business did not sufficiently distinguish the Respondent’s domain name from the Complainant’s trademark; and in The Gillette Co. v. RFK Associates FA 492867 (NAF July 28, 2005) it was found that the domain name <> was confusingly similar to the Complainant’s trademark DURACELL. 


Consequently, on the basis of the above precedents, the Panel has no difficulty in finding that paragraph 4(a) (i) is proved in relation to Respondent’s domain names <>, <>, and <> as they consist of Complainant’s well-known trademark with the addition of either or a country name or common dictionary words.


However the case against Respondent’s fourth domain name <> is less clearcut. The Panel finds that this name is not confusingly similar to the trademark VICTORIA’S SECRET. However Complainant claims rights in the word VICTORIA alone by virtue of its three US trademark registrations of BODY BY VICTORIA, a series of still pending US trademark applications all consisting of or containing the single word VICTORIA, and its domain names <> and <>.


The domain names can be disregarded, as the Policy requires only that a disputed domain name should be similar to a “trademark or service mark”, the trademark BODY BY VICTORIA is not similar to <>, and the application for the trademark VICTORIA is only pending and has been since August 8, 2008. Complainant may be using this word on its own as a trademark, but there is no evidence thereof, and nothing in the evidence supplied to indicate whether a date of first use has been claimed for the trademark application. Furthermore, not only might the tradmark application never be registered, but it also post-dates the domain name which was registered some 13 months earlier on July 12, 2007.


Consequently, the Panel finds that paragraph 4(a) (i) is not proved in relation to Respondent’s domain name <>.


Rights or Legitimate Interests


It is well established that a Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names and if it does so, the burden shifts to Respondent to show it does have rights or legitimate interests. See, for example, both Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, FA 741828 (NAF August 18, 2006) and AOL LLC v. Jordan  Gerberg, FA 780200 (NAF September 25, 2006).

It is clear to the Panel that in this case Complainant has indeed made out a prima facie case.


In his very brief response, Respondent states, in connection with all of the disputed domain names, that they are actually derived from “Vitória Régia” which is the name of the largest water lily in the world and a native of the Amazon River basin in Brazil. He further states that a translation of <> or <>. into English would therefore be “sell vitoria” or “sell vitoria’s secret”. However the domain names actually contain the word ‘victoria’ (a common girl’s name) and not ‘vitoria. It is the Panel’s job to study names as they are presented and not to indulge in a translation exercise. Furthermore, this argument fails miserably when one inspects the contents of Respondent’s website. Of the four sample pages filed in evidence by Complainant, three of them contain pictures and offers of products called VICTORIA’S SECRET. There is no mention on any of them of ‘Vitória’ or water lilies.


With regard to the domain name <>, Respondent states that it should be written as ‘fá’ which is his wife’s nickname, and not ‘fã’ which is Portuguese for ‘fan’. However Respondent produces no evidence to back up this claim, and in any case this particular domain name contains no accent, as indeed it cannot, in common with all domain names.


As Respondent is an individual, clearly not well versed in either English or the intricacies of the Policy or Rules, the Panel has attempted to look as favourably as possible on his arguments, but they are completely wide of the mark and unfortunately fail to address the issue. The Panel therefore finds that Respondent has no legitimate rights or interest in any of the disputed domain names and that paragraph 4(a)(ii) is proved in respect of all of the disputed domain names.


Registration and Use in Bad Faith


The Panel finds that Respondent is in breach of at least two of the sub-sections of paragraph 4(b) of the Policy.


For example, he is using all of the disputed domain names to operate a website purporting to sell Complainant’s authentic products. Complainant suggests that these may actually not be genuine but counterfeit, but there is no proof of this. In either case they have not been authorized by Complainant. The Panel believes that this use constitutes a disruption of Complainant’s business and so qualifies as bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. For example, in Southern Exposure v. Southern Exposure, Inc., FA 94864 (NAF July 18, 2000) the Panel found that the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant’s business); while in Paul Barnet Puckett d/b/a nature’s Window v. Christopher D. Miller, D2000-0297 (WIPO June 12, 2000) the Panel found that as the respondent had diverted business from the complainant to a competitor’s website this was in violation of paragraph 4(b)(iii) of the Policy; and in EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) the Panel found that the respondent registered and used the domain name <> in bad faith where he had used the domain name to promote competing auction sites.


In addition, the Panel finds that Respondent is using all of the disputed domain names to intentionally attract Internet users to its website and that he is attempting to profit from the resolving websites by creating a strong possiblity of confusion with Complainant’s trademark VICTORIA’S SECRET by offering products which could be its authentic products. In either case this is in violation of paragraph 4(b)(iv) of the Policy. For example, in Hewlett-Packard Company and Hewlett-Packard Development Company v. Mazhar Ali, FA 353151 (NAF December 13, 2004) it was held that “Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”; while in Utensilerie Associate S.p.A. v. C & M, D2003-0159 (WIPO April 22, 2003) it was said that “The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”


The Panel therefore concludes that paragraph 4(a)(iii) has been proved in respect of all of the disputed domain names.



All three elements required under the ICANN Policy have been established in respect of three of the disputed domain names namely <>, <>, <>, and so the Panel concludes that relief shall be GRANTED for them. However paragraph 4(a)(i) has not been established in respect of <> so relief is DENIED for it.


Accordingly, it is Ordered that the domain names <>, <>, and <>, be TRANSFERRED from Respondent to Complainant, but not <>.



David H Tatham, Panelist
Dated: March 18, 2010



Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum