Generic Top Level Domain Name (gTLD) Decisions

Complainant is Victoria's Secret Stores, Inc., Reynoldsburg, OH, USA ("Complainants") represented by Lisa Dunner, of McDermott, Will & Emery. Respondent is Thomas Wilson RJB Telcom, Inc., Fountain Hills, AZ, USA ("Respondent").

The domain name at issue is <miraclebras.com> registered with Tucows.com, Inc..

The undersigned 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.

John J. Upchurch as Panelist.

Complainants submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 29, 2001; the Forum received a hard copy of the Complaint on March 30, 2001.

On April 4, 2001, Tucows.com, Inc. confirmed by e-mail to the Forum that the domain name <miraclebras.com> is registered with Tucows.com, Inc. and that Respondent is the current registrant of the name. Tucows.com, Inc. has verified that Respondent is bound by the Tucows.com, Inc. 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 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 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@miraclebras.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 April 30, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 Respondent.

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

A. Complainants

B. Respondent

Respondent did not submit a Response to this proceeding.

This dispute is based upon the trademark MIRACLE BRA, which is registered with the United States Patent and Trademark Office, and has been adopted and continually used in commerce by the Complainants since 1994 in connection with the sale of, inter alia, bras and swimwear. Complainants prominently use the MIRACLE BRA mark in their world-famous advertisement campaign over national television and in various other media.

Respondent registered the domain name miraclebras.com on February 8, 1999, long after Complainants had established rights in and to the mark MIRACLE BRA.

Respondent has not developed a web site for the domain name and has been passively holding the domain name since registration.

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 Complainants’ undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainants 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 Complainants have 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's registered domain name <miraclebras.com> is confusingly similar to and nearly identical to Complainants' mark MIRACLE BRA. By adding a plural "s" to the end of Complainants’ mark, Respondent demonstrates an intent to create a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product on its web site. Any contemplated use of the domain name is likely to misleadingly divert web users trying to find and purchase the MIRACLE BRA products on the Internet. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of Complainant’s mark, CREAM PIE does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").

Therefore, the Panel finds that Complainants have met the burden set forth under Policy 4(a)(i), and that Respondent registered a domain name that is identical to or confusingly similar to Complainants’ MIRACLE BRA mark.

Respondent is not and has never been commonly known by the name <miraclebras.com>, either as a business, an individual, or an organization. See Policy Paragraph 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainants’ VICTORIA’S SECRET mark because of Complainants’ well established use of the mark).

Respondent does not use this domain name in connection with a bona fide offering of goods or services. See Policy Paragraph 4(c)(i). Nor is Respondent making a noncommercial or fair use of the domain name. See Policy Paragraph 4(c)(iii). The domain name <miraclebras.com> does not resolve to a web site or other lawful Internet presence. See Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Therefore, the Panel finds that Complainants have established the burden set forth under Policy 4(a)(ii), and that Respondent has no rights or legitimate interests in the domain name.

Because of the popularity of Complainants’ goods and the prominence of their marks, it may be assumed that Respondent had notice of Complainants’ mark at the time of the domain name registration. Therefore, Respondent registered the domain name in bad faith. 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).

Respondent does not currently use the domain name <miraclebras.com>, and under these facts and circumstances Respondent’s passive holding constitutes "bad faith" use. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (stating that "[i]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant's rights under trademark law.")

Therefore, the Panel concludes that the elements of Policy 4(a)(iii) have been satisfied, and Complainants have shown that Respondent registered and used the domain name in issue in 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 <miraclebras.com> be transferred from Respondent to Complainants.