Victoria's Secret et al v Plum Promotions
Claim Number: FA0101000096503
The Complainants are Victoria's Secret et al, Columbus, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. The Respondent is Plum Promotions, Scottsdale, AZ, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "victoriassecrettv.com" registered with BulkRegister.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.
Hon. James A. Carmody, as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 23, 2001; the Forum received a hard copy of the Complaint on January 23, 2001.
On January 26, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name "victoriassecrettv.com" is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 January 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2001 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@"victoriassecrettv.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 February 22, 2001, pursuant to Complainants’ request to have the dispute decided by a One Member panel, the Forum appointed the Hon. 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 the Respondent.
The Complainants requests that the domain name be transferred from the Respondent to the Complainants.
Respondent's registered domain name, "victoriassecrettv.com", is confusingly similar to the Complainants' mark VICTORIA'S SECRET and the domain name used by Complainants in connection with the legitimate sale of products bearing the mark VICTORIA'S SECRET, namely "victoriassecret.com". 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 surfers trying to locate the legitimate VICTORIA'S SECRET web site.
The mark VICTORIA'S SECRET is duly registered in the United States Patent and Trademark Office under seventeen valid, subsisting, and uncancelled registrations, and V Secret Catalogue, Inc. is the owner thereof. Many of these registrations are incontestable. Additionally, Complainant has approximately twenty applications pending before the United States Patent and Trademark Office which contain the mark VICTORIA'S SECRET and variations thereof.
Respondent’s domain name is nearly identical to the Complainants’ mark.
Respondent is not using the domain name in connection with a bona fide offering of goods or services.
Respondent is not commonly known by the domain name, either as a business, individual, or other organization.
Respondent is not making a legitimate noncommercial or fair use of the domain name.
Despite Complainants’ repeated requests, to date Respondent has failed to articulate any rights or legal interest they have in the domain name, nor is it possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate.
Respondent's conduct also demonstrates an intent to attract Internet users to their web site by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of his web site.
The Respondent has not disputed the contentions addressed in the Complaint.
The VICTORIA'S SECRET trademarks and service marks have been adopted and continually used in commerce by the Complainants and predecessors since June 12, 1977 in connection with the sale of, inter alia, women's lingerie, beauty products, outerwear, and gift items.
Complainants use the famous mark VICTORIA'S SECRET as the name of its over 800 Victoria's Secret retail stores located throughout the United States which advertise, offer for sale and sell a wide range of items bearing the mark VICTORIA'S SECRET. Complainants also use the mark VICTORIA'S SECRET in conjunction with international mail order catalogue sales and Internet commerce through the Complainants' web site, located at "victoriassecret.com".
In 1999, $2.94 billion of merchandise was sold bearing or in connection with the mark VICTORIA'S SECRET.
The mark VICTORIA'S SECRET is prominently used on the Internet in connection with the Victoria's Secret online fashion shows. In February 1999, Complainants launched the first live Internet fashion show, attracting a then-record 1.5 million reported web site visitors to a single live broadcast. This record was surpassed on May 18, 2000, when more than 2 million people from over 140 countries viewed the second annual broadcast of the Victoria’s Secret Internet fashion show, which prominently featured the mark VICTORIA’S SECRET.
The Respondent registered the "victoriassecrettv.com" domain name on May 19, 2000.
Complainants sent Respondent a cease and desist letter via e-mail and certified mail dated November 28, 2000, informing Respondent that the domain name infringes upon Complainants' trademark rights and requesting that Respondent assign the domain name to Complainants. The e-mail copy of this letter was successfully delivered to Respondent's listed e-mail address. Subsequent to November 28, 2000, the certified mail copy of the Cease and Desist letter was returned to counsel for Complainants by an individual named "Anthony" located at the mailing address given by the Respondent, who apparently is not affiliated with the Respondent. To date, Respondent has failed to respond to Complainants' requests and continues to control the domain name.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
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.
Identical and/or Confusingly Similar
The domain name is comprised of the Complainants’ trademark, and the terms "tv", and ".com". The mere addition of the generic term "tv" does not reduce the likelihood of confusion under Policy 4(a)(i). 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 circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Also, the addition of ".com" to the phrase "victoriassecrettv" does not reduce the likelihood of confusion. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998) (holding that "post-it.com" and "Post-It" are the same); see also Croatia Airlines v. Kwen Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines").
Rights or Legitimate Interests
Respondent has made no effort to use the domain name in connection with a bona fide offering of goods under Policy 4(c)(i).
Further, the Respondent has not offered any evidence that it is commonly known by the "victoriassecrettv.com" phrase under Policy 4(c)(ii) or that it is using the domain name in connection with a noncommercial purpose under Policy 4(c)(iii). Given the Complainants’ established use of their famous VICTORIA’S SECRET marks it is unlikely that the Respondent is commonly known by this mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).
Registration and Use in Bad Faith
Because of the popularity of Complainants’ goods and the prominence of their marks, it may be assumed that the Respondents had notice of Complainants’ marks at the time of the domain name registration. See Nintendo of America Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that the Respondent, at the time of registration, had notice of the Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).
The domain name in question is so obviously connected with the Complainants, that use by someone with no connection with the Complainants suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) ("[T]he domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name "victoriassecrettv.com" be transferred from Respondent to Complainants.
Hon. James A. Carmody, Panelist
Dated: February 27, 2001
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