DECISION

V Secret Catalogue, Inc. v. Goodsoft, Ltd.

Claim Number: FA0403000244089

PARTIES

Complainant is V Secret Catalogue, Inc., Wilmington, DE (“Complainant”), represented by Melise Blakeslee, of McDermott, Will & Emery, 600 13th Street, N.W., Washington, D.C. 20005.  Respondent is Goodsoft, Ltd. (“Respondent”), 159-1 COEX Office 4f, Samsung Dong, Gangnamgu, Seoul 135-090.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <victoriassecret.net>, registered with Onlinenic, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 8, 2004; the Forum received a hard copy of the Complaint on March 8, 2004.

On March 9, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <victoriassecret.net> is registered with Onlinenic, Inc. and that the Respondent is the current registrant of the name.  Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 March 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 2004 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@victoriassecret.net by e-mail.

A timely Response was received and determined to be complete on March 31, 2004.

On April 9, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

            Complainant makes the following contentions:

1.            Respondent’s <victoriasecret.net> domain name is identical to and confusingly similar to Complainant’s famous trade and service marks, the first of which was in commerce as early as June 12, 1977, and was registered with the United States Patent and Trademark Office on January 20, 1981.

2.            Respondent does not have any rights to or legitimate interest in the disputed domain name.

            3.            Respondent registered and used the disputed domain name in bad faith.

B. Respondent

1.            Respondent does not deny that the disputed domain name is identical and confusingly similar to Complainant’s mark.

2.            Respondent asserts that it has rights to and a legitimate interest in the disputed domain name because Respondent has a girlfriend nicknamed “Victoria,” and he and she wanted to create a home page.  The English name was chosen since a Korean version of the name “Victoria” was not available in 2001.

3.            Respondent has not acted in bad faith since he has not used the domain website, and does not want to rent or sell the disputed domain name.  He has not seen the Complainant’s mark in Korea.

FINDINGS AND DETERMINATIONS

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.

Identical and/or Confusingly Similar

Complainant is a wholly owned subsidiary of LIMITED BRANDS, and is the United States record owner of the VICTORIA’S SECRET trademarks and service marks, which it licenses to other subsidiaries of LIMITED BRANDS.

Complainant’s VICTORIA’S SECRET mark is registered with the United States Patent and Trademark Office under numerous valid registrations including registration numbers, 1,146,199 (registered on Jan. 20, 198), 1,179,309 (registered on Nov. 24,198), 1,224,782 (registered on Jan. 25, 1983), 1,924,706 (registered on May 3, 2001), 1,908,042 (registered Apr. 28, 2001), 1,935,346 (registered on Apr. 1, 2001), and 2,099,093 (registered on Aug. 5, 1997).  Such registrations clearly establish Complainant’s rights in the VICTORIA’S SECRET mark.  See Janis Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired a secondary meaning.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark.  “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

It is obvious that the disputed domain name, <victoriassecret.net>, is identical to Complainant’s mark VICTORIA’S SECRET because the name incorporates Complainant’s mark in its entirety and merely adds the generic top-level domain “.net.”  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).[1]

The first required prong of the Policy has been met by Complainant.

Rights or Legitimate Interests

Respondent is not using the disputed domain name <victoriassecret.net> in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is he making a legitimate non-commercial or fair use of the disputed domain name under Policy ¶ (c)(iii).  Respondent has not connected the domain name to an operative website.  Rather, the language located at the disputed domain name’s online location reads:

“Start Construction Work.  If you have any Question [sic] Please contact BestDomain@Korea.com.”

It is determined, accordingly, that Respondent has had approximately 3 years to develop a website at the disputed domain name and he has not done so.  See Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIP Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Respondent is not commonly known by the domain name because Respondent’s business name is Goodsoft Ltd. and the WHOIS information does not indicate that Respondent is known by any name to the contrary.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the name).

Respondent’s assertion that he wanted to honor a girlfriend nicknamed “Victoria” would be plausible if he had not added “secret” to the disputed domain name.  The use of “secret” belies his assertion.

The second required prong of the Policy has been met by Complainant.

Registration and Use in Bad Faith

The Panelist agrees with Complainant that it is inconceivable that Respondent was not aware of Complainant’s mark VICTORIA’S SECRET when Respondent registered the disputed domain name.  Bad faith registration of a domain name has consistently been found when a respondent should have reasonably been aware of Complainant’s trademark or it registers a domain name it knows to be similar to a third-party’s mark.  It is determined that Respondent either knew or reasonably should have known about Complainant’s mark at the time of the domain name registration, which is evidence of bad faith under Policy ¶ 4(a)(iii).  See Victoria’s Secret v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001 (finding that, in light of the notoriety of Complainant’s famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Thus, it is found and determined that the disputed domain name was registered in bad faith.

Of course, the Policy requires “use” in bad faith in addition to bad faith registration.

This Panelist has confronted this issue numerous times.  In SAS Institute Inc. v. ALU, FA 126631 (Nat. Arb. Forum Nov. 7, 2002), he said:

“The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the disputed domain names, and that he has registered the dames in bad faith.  It makes no sense whatsoever to wait until Respondent actually ‘uses’ the names, when inevitably, there is such use, it will create the confusion described in the Policy.

Under the circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened.  (Green Products Co. v. Independence By-Products Co. (N.D. Iowa (1997) 992 F.Supp. 1070.)  The threatened harm is ‘use.’  (see Phat Fashions v. Kruger, FA96193 (Nat. Arb. Forum, Mar. 19, 2001); Hungry Minds, Inc. v. Mall for Dummies, FA96635 (Nat. Arb. Forum. Apr. 4, 2001.)

In any event, there is ‘use’ because Respondent has ‘passively held’ the disputed domain names since its registration despite his assertion that he is planning to create a website.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of Paragraph 4(a)(iii) of the Policy); see also, Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is ‘inconceivable that the Respondent could make any active use of the disputed  domain names without creating a false impression of association with the Complainant’).

The Panelist finds and determines, accordingly, that Respondent registered and used the disputed domain names in issue in bad faith.”

Here also, in like manner, the Panelist finds and determines that the disputed domain name was registered and used in bad faith.

In view of the overwhelming evidence to the contrary, Respondent’s assertion of his lack of knowledge of Complainant’s mark is not believable.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <victoriassecret.net> domain name be TRANSFERRED from Respondent to Complainant.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:

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