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Wednesday, October 30, 2013 - 10:08
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In a highly unusual case, two Australian women operating a brothel’s website under the name ‘Victoria’s Secret’, won a dispute against the brothel’s namesake – the world renowned lingerie purveyor. The unexpected ruling allowed a defence known as ‘delay and acquiescence’ or ‘laches’ and awarded the Australian women legitimate rights to use the domain www.victoriassecrets.com.au despite the fact that it was deemed confusingly similar to that of lingerie brand Victoria’s Secret and also that it was clearly adopted in bad faith.

The background

Explains Gaelyn Scott, Director in & head of ENS’s IP Department, “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.’ Their ‘no worries mate’ website makes their offering very clear with the following wording: ‘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.’
“In domain name disputes the main issues of consideration are: 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 in the name?”

The arguments

The lingerie company argued that Victoria’s Secret was 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 had no legitimate right to the name and that they registered it in order to capitalise 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 ones used for Victoria’s Secret. Moreover, the prostitutes are dressed in sexy lingerie and described as ‘models’. The company argued that the public was 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, notes Scott. “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. 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.”

The conclusion

The panellist that heard the dispute held that the names were indeed confusingly similar. On the issue of whether the name had been registered in bad faith, he concluded that the ladies must have known of the lingerie brand when they registered the domain name, and that they probably had intended to capitalise on it. There had therefore been bad faith.
“However, despite the bad faith, the panellist felt that there were exceptional circumstances at play here,” explains Scott. 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 letter of demand 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 panellist felt, meant that the ladies were justified in concluding the issue had gone away and he therefore awarded them the rights to the domain.

Copyright © Insurance Times and Investments® Vol:26.1 1st January, 2013
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