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
-
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.
-
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.
-
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
.
-
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.
-
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.
-
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.
-
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.
-
No evidence has been presented that Respondent has
any right or legitimate interest to the domain name as provided
in Rule 4(c).
-
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:
- 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
- The Respondent has no right or legitimate interest in the domain
name; and
- 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:
- Demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services prior
to the dispute;
- An indication that the registrant has been commonly known by
the domain name even if it has acquired no trademark
rights; or
- 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:
- Circumstances indicating the domain name was registered for
the purpose of resale to the trademark owner or competitor
for
profit;
- A pattern of conduct showing an attempt to prevent others from
obtaining a domain name corresponding to their trademarks;
- Registration of the domain name for the purpose of disrupting
the business of a competitor; or
- 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
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