DECISION

Victoria's Secret et al v Nebojsa Prijic

Claim Number: FA0104000097023

PARTIES

Complainants are Victoria's Secret, et al, Columbus, OH, USA (“Complainants”) represented by Lisa Dunner, of McDermott, Will & Emery.  Respondent is Nebojsa Prijic, Split, DA, Croatia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoria-secrete.com>, registered with BulkRegister.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 4, 2001; the Forum received a hard copy of the Complaint on April 4, 2001.

On April 10, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain name <victoria-secrete.com> is registered with BulkRegister.com and that the Respondent is the current registrant of the name.  BulkRegister.com has verified that Respondent is bound by the BulkRegister.com 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 April 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 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@victoria-secrete.com by e-mail.

A timely response was received and determined to be complete on May 1, 2001 and an additional response was received from Complainants on May 7, 2001.

On May 11, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainants.

PARTIES’ CONTENTIONS

A. Complainants assert that

Respondent filed a domain name <victoria-secrete.com>; that this domain name 

contains a common misspelling of Complainant’s well-known VICTORIA’S SECRET mark; that this domain name is identical to or confusingly similar to Complainant’s well-known mark; that Respondent has no rights to or legitimate interest in Complainants’ well-known mark; and that Respondent registered and used the domain name in issue in bad faith.

2. Respondent urges that

Respondent’s disputed domain name is not confusingly similar to Complainants’ mark; that there are obvious differences between them; that Complainants can have no rights to the personal name Victoria Secrete; that Respondent is acting in the name and interest of the real Domain Name owners; that Respondent has all rights and legitimate interests in the disputed domain name; and that Respondent registered the disputed domain name in good faith for a legitimate, non-infringing purpose.

FINDINGS

Complainants own the registered mark VICTORIA’S SECRET, which these entities have used in commerce since June 12, 1977.  Additionally, Complainant uses the domain name <victoriassecret.com> for Internet commerce.  Complainants’ business operations are extensive and internationally known.

DISCUSSION

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 a 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 Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainants established their rights in the mark contained within the domain name at issue that was registered by Respondent.  That mark, VICTORIA’S SECRET, is almost identical to the domain name registered here <victoria-secrete.com>.  At the very least, the domain name in dispute here is confusingly similar to Complainants’ well-known mark because Respondent’s domain name is a common misspelling of Complainant’s mark.  See Victoria’s Secret et al v. Personal, FA 96491 (Nat. Arb. Forum Feb. 27, 2001) (finding the domain name <victoriasecrete.com> to be confusingly similar to Complainant’s VICTORIA’S SECRET mark); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Victoria’s Secret et al v. Netchem, Inc., FA 96560 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <victoriassecre.com>, <victoriassecrt.com>, and <victoriasseret.com> domain names are common misspellings of Complainant’s domain name and mark).

Although Respondent urges that Complainants cannot maintain exclusive rights where differences exist in the names and that the disputed domain name is a personal web address that might be used in connection with children’s services, not lingerie, the Panel is not persuaded.   There is real chance of confusion between Complainants’ mark and the disputed domain name at issue here.

The Panel finds that the domain name registered by Respondent that contains a common misspelling of Complainants’ well-known mark is confusingly similar to a trademark or service mark in which Complainants have rights. Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainants also established rights in the VICTORIA’S SECRET mark. Complainants allege that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name and since Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The Panel agrees.  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum, Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name and is not using the domain name in connection with a legitimate or fair use).

Moreover, despite Complainants’ repeated requests, Respondent has failed to articulate any rights or legal interest that it has in the disputed domain name and, frankly, it is virtually impossible to conceive of any plausible (actual or contemplated) active use of the domain name by Respondent that would not be illegitimate. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); see also 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) or (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

Despite Respondent’s argument that it is acting on behalf of the real owners and that the disputed domain name is a personal web address that might be used in connection with children’s services, the Panel is not persuaded. Respondent’s assertions without proof do not meet the “plausible explanation” test.  See IG Index PLC v Index Trade, D2000-1124 (WIPO Oct. 16, 2000) (finding that Respondent had rights in a domain name because Respondent claimed a “plausible explanation” to which the Panel must give weight). Respondent has shown no rights to nor legitimate interests in the mark contained within the domain name registered by Respondent.

Therefore the Panel finds that Respondent has no rights to or legitimate interests in Complainants’ well-known mark that is contained in the domain name in issue. Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainants assert that Respondent acted in bad faith because Respondent registered the disputed domain name to intentionally attract Internet users to its web site. Such Internet users, Complainants urge, would access Respondent’s website because of the likelihood of confusion with Complainants’ famous mark.  The Panel agrees.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent and created confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of that web site); see also America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his web-site for commercial gain by creating a likelihood of confusion with the Complainant’s mark by offering the same chat services via his web-site as the Complainant).

Also, Respondent demanded $970.00 for transfer of the disputed domain.  Where the demand is in excess of reasonable costs of registration of the domain name, the Panel is permitted to find bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); see also World Wrestling Fed’n Entertainment, Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Finally, the popularity of Complainants’ famous mark permits the inference that Respondent knew about Complainants’ well-known mark prior to registering the disputed domain name. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

For these reasons, the Panel finds that Respondent registered and used the domain name in issue in bad faith. Policy ¶ 4(a)(iii).

DECISION

For all of the above reasons, the Panel finds that Complainants met the burden imposed on Complainants in this proceeding and that Complainants are entitled to the requested relief.  It is ORDERED that the domain name in issue be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson

Retired Judge

Arbitrator

Dated: May 25, 2001

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