You’ve heard of Victoria’s Secret, right! The US company is, of course, a well-known purveyor of lingerie, a product for which there is clearly a great deal of demand:  Victoria’s Secret has some 1 000 stores throughout the world, and its turnover in 2010 was an impressive US$5.5 billion.

In 2012 Victoria’s Secret lodged an objection to a domain name registration for www.victoriassecrets.com.au, using the Dispute Resolution Procedure that applies to Australian domain name registrations. The registration, which is owned by two ladies  called Linda, goes back to the year 2001, and it’s used for a website that advertises ‘Sydney's Finest Ladies and Escorts.’ So yes, these are no ordinary ladies, they are indeed ladies of the night. Their ‘no worries mate’ website makes this pretty clear: ‘Our gorgeous ladies work because they want to and enjoy what they do. Victoria’s Secrets ladies pride themselves on giving a passionate and memorable service. Our girls are self-motivated and goal oriented and just love to tease and love our clients. Our girls are medically fit so you can enjoy them without any worries in mind.’ Charming!

In domain name disputes the main issues are these: are the names similar; was there bad faith on the part of the person who registered the name; and does the person who registered the name have any legitimate right to or interest to the name?  The lingerie company’s arguments were, therefore, pretty predictable.  It argued that Victoria’s Secret is an internationally known brand name. It argued that the name chosen by the ladies, www.victoriassecrets.com. au, is almost identical.  It argued that the ladies have no legitimate right to the name and that they registered it in order to capitalize on the reputation of the lingerie brand -  in support of this argument the company pointed to the fact that, on the brothel’s website,  the letters ‘V’ and ‘S’ appear in a stylized script which is similar to the one used for Victoria’s Secret,  whereas the prostitutes are dressed in sexy lingerie and described as ‘models’ (it’s a bit naïve to expect them to be dressed in overalls and described as hookers isn’t it!). The company argued that the public is likely to assume some sort of connection between the lingerie brand and the brothel. And it argued that the Victoria’s Secret brand will be tarnished because, although prostitution may be the world’s oldest profession, it certainly isn’t the most highly esteemed.

The two Lindas, of course, presented a very different case.  They denied that they had copied the name, or that they had intended to trade off the reputation of Victoria’s Secret. In fact, they justified the adoption of the name quite smartly - the business is located on Victoria Avenue, and the word ‘secrets’ alludes to… well the nature of the services.   They argued that they had been using the name for many years, and in support of this they  submitted a copy of a Penthouse magazine from the year 2000 in which they had advertised their business – was this perhaps a sneaky attempt to influence the  person who was designated to hear the dispute and who was, indeed, a man?  The ladies argued that, as the goods and services offered by the two businesses were totally different, there was no likelihood of anyone assuming a connection between them.

So what did the man who heard the dispute (referred to as ‘the panelist’) do in the face of such compelling arguments (and a Penthouse magazine)?  Well, for starters he held that  the names were indeed  confusingly similar. On the issue of whether the name had been registered in bad faith, he said that this was difficult, because it wasn’t really clear how well known Victoria’s Secret was in Australia when the domain name was registered in 2001 - although the Victoria’s Secret trade mark was registered in Australia way back in 1990, the first Australian store only opened in 2010, but a considerable number of Australians did buy goods by mail order during the intervening period. The panelist did, however, conclude that the ladies must have known of the lingerie brand when they registered the domain name, and that they probably had intended to capitalize on it. There had therefore been bad faith.

Yet despite the bad faith, the panelist felt that there were exceptional circumstances at play here. One of these was the fact that the ladies had used the name for over 10 years.  The other was that in 2005 lawyers  acting for Victoria’s Secret had sent a ‘cease and desist’ letter to the ladies, who responded by asking for details of the use of the trade mark Victoria’s Secret in Australia.  This request was ignored, and no further correspondence took place.   This, the panelist felt, meant that the ladies were justified in concluding that the issue had gone away. The panelist said this: ‘This Panel notes its opinion that the question of whether or not the Respondent has a right or legitimate interest in the disputed domain name is fluid – that is to say, it is capable of being answered differently at different times …This Panel further believes that delay can, in exceptional circumstances, contribute to the Respondent acquiring through its subsequent bona fide use a right or legitimate interest in a domain name even though it had no such right or legitimate interest at an earlier time.’

So, the panelist allowed a defence that seldom comes up in domain name proceedings, namely the defence of delay and acquiescence (also known as ‘laches’). Which means that, even if you adopt a name in bad faith, you can, in certain circumstances, acquire legitimate rights to it over time.  That’s interesting from a legal point of view.  But let’s face it, in this case it’s the facts that are really interesting!

GAELYN SCOTT: Director in & Head of ENS’ IP Department ([email protected])