WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Victoria’s Secret Stores Brand Management, Inc. v. Linda Cameron Pickard, Linda Watson

Case No. DAU2012-0015

1. The Parties

The Complainant is Victoria’s Secret Stores Brand Management, Inc. of San Francisco, California, United States of America (“United States”), represented by Pranger Law Group, United States of America.

The Respondent is Linda Cameron Pickard, Linda Watson of West Chatswood, New South Wales, Australia, represented by CG Lawyers, Australia.

2. The Domain Name and Registrar

The disputed domain name <victoriassecrets.com.au> is registered with TPP Domains Pty Ltd. dba TPP Internet.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2012. On May 7, 2012, the Center transmitted by email to TPP Domains Pty Ltd. dba TPP Internet a request for registrar verification in connection with the disputed domain name. On May 10, 2012, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2012. The Response was filed with the Center on May 31, 2012.

The Center appointed Andrew F. Christie as the sole panelist in this matter on June 5, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

A supplemental filing was received by the Center from the Complainant on June 8, 2012. An objection by the Respondent to the Complainant’s supplemental filing was received by the Center on June 18, 2012. In the event that the Panel was to allow the Complainant’s supplemental filing, the Respondent filed its own supplemental filing in response to the Complainant’s supplemental filing, on June 18, 2012. On June 19, 2012, the Panel issued Administrative Panel Procedural Order No. 1 (Procedural Order No. 1), admitting into the case record the Complainant’s and the Respondent’s supplemental filings, requesting specific information from the Complainant and the Respondent, instructing both the Complainant and the Respondent to refrain from filing any further unsolicited supplemental submissions, and extending the due date for rendering a decision.

On June 25, 2012, the Center received a reply from the Respondent to Procedural Order No. 1. On June 26, 2012, the Center received a reply from the Complainant to Procedural Order No. 1. On June 26, 2012, the Respondent requested leave to file a document referred to in its submission in response to Procedural Order No. 1. On June 26, 2012, the Panel issued Administrative Panel Procedural Order No. 2, granting leave to the Respondent to file the document, and declaring that no further supplemental submissions would be accepted unless expressly requested by the Administrative Panel.

4. Factual Background

The Complainant is the largest lingerie retailer in the United States of America, with over 1000 “Victoria’s Secret” retail stores, a mail order catalog, and a website at “www.victoriassecret.com” which commenced operating in 1998. Through its mail order catalog and its website, the Complainant reaches over 390 million customers each year. Since the early 1990s, the Complainant has sold merchandise to a value in excess of USD 1 billion each year. In 2010, the Complainant sold over USD 5.5 billion worth of merchandise.

The Complainant is the owner of several trademark registrations for the trademark VICTORIA’S SECRET in relation to lingerie, beauty products, swimwear and clothing, amongst other goods. This trademark has been used continuously since at least as early as June 12, 1977. The Complainant’s Australian application for trademark registration of VICTORIA’S SECRET was accepted on March 6, 1990.

The disputed domain name currently resolves to a website advertising “Sydney’s Finest Ladies & Escorts” in connection with a brothel service in Sydney, Australia.

There is uncertainty as to when the disputed domain name was registered by the Respondent. The Complainant asserted in the Complaint that the disputed domain name was registered by the Respondent on or about September 21, 2011. The Respondent asserted in the Response that it has been the proprietor of the disputed domain name, under different company entities, since around 2000-2001, with the exception of one period of approximately 18 months when, through an inadvertent oversight, another person was temporarily the registrant before the Respondent re-acquired it. In its second supplemental filing, the Complainant acknowledged that it became aware of the Respondent’s ownership of the disputed domain name shortly before May 12, 2005. The Respondent, in its second supplemental filing, produced evidence that appears to establish that a company associated with the Respondent was the owner of the disputed domain name as of April 4, 2006.

On May 12, 2005, a legal representative of the Complainant wrote a cease-and-desist letter to the Respondent, asserting that the Respondent’s registration and use of the disputed domain name constituted infringement of the Complainant’s trademark, and demanding transfer to it of the disputed domain name. On August 8, 2005, another legal representative of the Complainant wrote a further cease-and-desist letter to the Respondent. A legal representative of the Respondent replied to this second letter on August 29, 2005, denying liability on the basis that the Complainant’s trademark was not well-known, that the Complainant and Respondent operated in different industry sectors, and that consumers were unlikely to be misled by the Respondent’s use of the disputed domain name. It appears that there were no further communications between the Complainant and the Respondent until the Complaint was notified to the Respondent on May 11, 2012.

5. Parties’ Contentions

A. Complainant – initial filing

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s VICTORIA’S SECRET trademark because it incorporates the entire trademark. The addition of the letter “s” and the extension “.com.au” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The Respondent’s use of the disputed domain name makes it clear that the Respondent is using the brand and image of the Complainant’s VICTORIA’S SECRET trademark in order to promote prostitution, and Internet users are likely to conclude that the disputed domain name is associated with the Complainant because it is virtually identical to the Complainant’s trademark.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the Respondent has no trademark rights in connection with any mark that is identical, similar or in any way related to the Complainant’s VICTORIA’S SECRET trademark; (ii) the Respondent is not known by the name “Victoria’s Secret”; (iii) the Respondent is not a licensee of the Complainant and has never been authorized to use the Complainant’s VICTORIA’S SECRET trademark and has not received permission from the Complainant to register the disputed domain name containing the Complainant’s trademark; (iv) the Respondent has not been using the disputed domain name in connection with any bona fide offering of goods and services as the Respondent has been using the VICTORIA’S SECRET trademark to promote a prostitution business, which does not include any genuine “Victoria’s Secret” products; and (v) the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith because: (i) its registration is intentionally and inherently deceptive and is meant to confuse Internet users as to the source, sponsorship, affiliation or endorsement of the Respondent’s website; (ii) the use of a domain name to promote prostitution and create a likelihood of confusion with the Complainant’s trademark is itself evidence of bad faith; (iii) the Respondent is not authorized or licensed to use the VICTORIA’S SECRET trademark for any purpose; (iv) the fact that the Respondent is using the disputed domain name in connection with prostitution, and the clear connection between the Respondent’s use of the disputed domain name and the Complainant’s trademark and products, lead to the conclusion that the Respondent had actual knowledge of the Complainant and its VICTORIA’S SECRET trademark when it registered the disputed domain name; (v) given the registration, prior use and notoriety of the VICTORIA’s SECRET trademark by the Complainant, the Respondent had constructive knowledge of such use; (vi) based on the almost certainly illegal nature of the content and services promoted at the website to which the disputed domain name resolves, the VICTORIA’S SECRET trademark and brand is severely tarnished; and (vii) based on the Respondent’s use of the disputed domain name to sell counterfeit products, there is no doubt that the disputed domain name was registered and is being used in bad faith.

B. Respondent – initial filing

The Respondent contends that: (i) since 2000-2001 it has engaged in the legitimate promotion of the Respondent’s brothel business by means of the disputed domain name, with the exception of an 18 month period; (ii) it does not now, and never did, promote or offer for sale the Complainant’s “high fashion products”; (iii) its trading name is derived from the trading address of the Respondent’s business, namely Victoria Avenue, and that that address, coupled with the ordinary English word “secrets” denotes the discrete nature of the legitimate services the Respondent’s business offers; (iv) as its services are very different from those of the Complainant, consumers are unlikely to be misled or deceived into thinking that they are acquiring the Complainant’s products or services offered with the license or approval of the Complainant; (v) it did not register the disputed domain name with the intention of trading off any name or mark in which the Complainant contends it has a reputation; (vi) for approximately five years before any initial notice of the subject matter of this dispute in 2005 the Respondent engaged in a bona fide use of the disputed domain name in connection with the Respondent’s business and its legitimate services; (vii) at all times the Respondent has made a legitimate fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s name, mark and reputation; and (viii) on May 12, 2005, and August 8, 2005, the Complainant wrote to the Respondent objecting to the Respondent’s registration and use of the disputed domain name, to which the Respondent replied on August 29, 2005, after which the Complainant took no further action, thereby acquiescing to the continued use of the disputed domain name by the Respondent.

C. Complainant – supplemental filings

The Complainant filed a supplemental filing in response to the Respondent’s Response, in which the Complainant contends that: (i) it has been using the VICTORIA’S SECRET trademark since 1977, and that it has had a registered trademark in Australia since as early as September 1990, well before the Respondent’s first use of “Victoria’s Secrets” as a business name in 1999; (ii) the Respondent is using a cursive script in the “V” of “Victoria’s” and the “S” of “Secrets” in its advertisements and on its “Website Coming Soon” information page at the disputed domain name, which is nearly identical to the Complainant’s heritage mark; (iii) from its fashion shows and catalogs featuring supermodels in lingerie, the Complainant and its VICTORIA’S SECRET trademark are synonymous with sex appeal, and the Respondent’s advertisements show women in lingerie and refer to escorts as “models”, illustrating the Respondent’s intention to trade off the goodwill of the Complainant; (iv) by the time the Respondent began using “Victoria’s Secrets” as a business and domain name, the Complainant’s VICTORIA’S SECRET trademark was already famous and the Respondent was hoping to capitalize on the sexy nature and association of the Complainant by registering the disputed domain name and using it to promote a brothel; (v) the Complainant has not acquiesced to the Respondent’s use of the disputed domain name, and, in fact, the Complainant’s cease and desist letters of May 12, 2005, and August 8, 2005, demonstrate that the Complainant was fully opposed to the Respondent’s use of the disputed domain name in connection with promoting or offering brothel services; (vi) the Respondent’s argument that its name is “derived from the trading address of the Respondent’s Business, namely Victoria Avenue” and the discrete (“secret”) nature of its services is disingenuous, and demonstrates that the Respondent was hoping to trade off the Complainant’s famous trademark and goodwill by causing confusion and intrigue among consumers regarding the source, sponsorship or affiliation of its services.

In response to Procedural Order No. 1, seeking specific information from both parties, the Complainant contended the following: (i) the Complainant became aware of the Respondent’s ownership of the disputed domain name shortly before sending its cease and desist letter of May 12, 2005, to the Respondent; (ii) the Complainant is not aware of further communication to the Respondent or its associated companies, and that it was decided at that time not to pursue a lawsuit in court against the Respondent, and to let the objection and protest to the disputed domain name stand; (iii) since that time, search engine algorithms and optimization standards have changed and the disputed domain name is now a more pressing commercial concern because it contains the exact VICTORIA’S SECRET trademark and therefore receives additional Internet traffic; (iv) the Respondent has never denied being fully aware of the famous VICTORIA’S SECRET trademark when it registered the disputed domain name, and this alone is evidence of bad faith; (v) the Complainant has brought its Complaint in the proper forum because the Respondent registered the disputed domain name well after the Complainant made the VICTORIA’S SECRET trademark famous; (vi) the Policy does not provide a defense of acquiescence or laches; (vii) when the Respondent registered the disputed domain name in 2000-2001 the Complainant had been operating for over 20 years, had offered its products through a website at “www.victoriassecret.com” for over five years, had VICTORIA’S SECRET registered on the Australian register for over 10 years, and had received a UDRP holding stating that VICTORIA’S SECRET is a famous trademark for the purpose of domain name disputes in V Secret Catalogue, Inc., et al. v. Artco, Inc., NAF Claim No. 94342.

D. Respondent – supplemental filings

The Respondent filed a supplemental filing in response to the Complainant’s supplemental filing, in which the Respondent contends that: (i) as the Complainant’s business is not that of a brothel, none of its trademarks are registered in respect of related services; (ii) as the Complainant and Respondent offer their goods and services to different consumers via different channels, no opportunity for deception or confusion reasonably arises; (iii) the Respondent has not appropriated any aspect of the Complainant’s get up in the promotion of its business; (iv) the Complainant’s assertion that the cursive script used on the Respondent’s website is almost identical to the Complainant’s heritage mark is unsupportable; (v) the Respondent’s use of lingerie imagery is entirely appropriate given that the Respondent runs a brothel; (vi) the Complainant’s submissions are merely assertions that do not establish bad faith registration or use; (vii) the first component of the disputed domain name “victoria” refers to the address of the Respondent’s business and the second component “secrets” aptly applies to the services provided by the Respondent; (viii) the Complainant has known about the disputed domain name for at least seven years and, by not taking any action, has allowed the Respondent to operate its business and continue to build its reputation in that domain name; and (ix) bad faith registration cannot be inferred because the Respondent has held the disputed domain name for about 12 years, and given the lengthy bona fide use of it demonstrates the Respondent has a legitimate interest in it.

In response to Procedural Order No. 1, the Respondent supplied the following: (i) an incomplete record of ownership of the disputed domain name, with the earliest recording of the Respondent’s ownership (in the name of “Cam-Wats Investments Pty. Ltd.”) dating from May 19, 2006; (ii) an extract from the Australian Securities and Investment Commission’s database showing the Business Name “VICTORIA’S SECRETS” being registered to the Respondent from February 4, 2000, to February 4, 2015, (initially in the name of “Cam-Wats Investments Pty. Ltd.” and changing to “Linda Cameron Pickard” on July 23, 2008); (iii) archived webpages resolving from the disputed domain name at which the Respondent’s business is advertised, the earliest of which dates from January 3, 2002; (iv) a copy of the Respondent’s business card, which the Respondent contends has been in continuous use since about 2000, bearing the disputed domain name; (v) copies of printouts from the White Pages and Yellow Pages directories, including an example of advertising of the Respondent’s “Victoria’s Secrets” business containing the disputed domain name in a Yellow Pages directory dated 2004; and (vi) a copy of an advertisement for the Respondent’s “Victoria’s Secrets” business stated to be from the “Chatswood Shopping Guide”, and a letter from a representative of Shopping Guides Pty. Ltd. dated June 25, 2012, stating that the business “Victoria’s Secret” advertised each year in “The Chatswood Shopping & Dining Guide” from 2001 up to and including 2008.

In response to Procedural Order No. 2, the Respondent provided a copy of the cover of the “Australian Penthouse Magazine” edition of June 2001 together with a page, alleged by the Respondent to be from that edition, containing an advertisement for the Respondent’s business that includes a reference to the disputed domain name.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates wholly the Complainant’s registered trademark VICTORIA’S SECRET (except for the apostrophe) and adds to it an “s” at the end of “secret”. These minor alterations do not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s trademark VICTORIA’S SECRET was accepted for registration in Australia in March 1990, more than a decade before the Respondent’s earliest proven use of the disputed domain name in January 2002. Although the Complainant asserted substantial use of its trademark worldwide, it made no assertions and provided no evidence as to the extent of the use or the reputation of its trademark in Australia. According to publically available and apparently reputable information about the Complainant’s business, the first store in Australia operating under the Complainant’s trademark opened in 2010. Thus, it would appear that any reputation existing in Australia at the time the Respondent began using the disputed domain name could have arisen by virtue only of Australians receiving the Complainant’s mail order catalog, Australians accessing the Complainant’s website, or Australians visiting the Complainant’s stores in other countries.

Although the matter is not without doubt, the significant value of the sales of merchandise under the Complainant’s trademark that occurred worldwide since the 1990s, and the existence of the Complainant’s website at “www.victoriassecrets.com” since 1998, persuades this Panel, on the balance of probabilities, that the Respondent was aware of the Complainant’s trademark at the time it registered and began using the disputed domain name. In addition, this Panel is persuaded, on the balance of probabilities, that the Respondent’s choice of the disputed domain name was motivated by the notoriety of the Complainant’s trademark, and was a deliberate attempt to benefit from that notoriety in the promotion of its own business.

The above conclusion would typically be sufficient to satisfy this Panel that the Respondent had no rights or legitimate interests in the disputed domain name. According to the present record, however, this is not a typical case. The exceptional circumstances of this case are that the Respondent appears to have been using the disputed domain name almost continuously for a period of more than 10 years before the filing of this Complaint, and for a period of seven years after the Complainant first became aware of, and complained about, the Respondent’s use of the disputed domain name. These circumstances raise the question of what, if any, is the significance of the Complainant’s delay in bringing action against the Respondent.

The issue of delay – and the related issue of acquiescence and the doctrine of laches – has been considered in a number of cases decided under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Policy is based upon, and is very similar to, the UDRP and so this Panel considers it is appropriate to consider the reasoning in cases decided under the UDRP in determining this issue under the Policy. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 4.10, UDRP Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. The WIPO Overview 2.0, at paragraph 4.10, goes on to state, however, that “Panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements” of the Policy.

The approach reflected in the WIPO Overview 2.0 received strong support in the recent case Alimak Hek, Inc. v. Richard Wheat, WIPO Case No. D2011-1344, where it was stated: “The proper approach to delay-based defenses, now reflected in paragraph 4.10 of the Overview, […] is sound, rejecting a standalone equitable defense based only upon the passage of time in favor of considering delay in light of the Policy’s latter two express requirements.” This Panel agrees, and believes that the principles that apply in relation to delay under the UDRP also apply in relation to delay under the Policy. 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.

In this Panel’s view, the exceptional circumstances of this case produce just that outcome. The Panel’s finding, above, about the Respondent’s knowledge of the Complainant’s trademark and the Respondent’s motivation for registering the disputed domain name precludes the conclusion that the Respondent had a right or legitimate interest in the disputed domain name when it registered and first began using the disputed domain name in the early 2000s. In this Panel’s view, however, the situation changed some time after the Respondent replied to the Complainant’s second cease-and-desist letter in August 2005. In its response to the second cease-and-desist letter, the Respondent disputed the Complainant’s allegations of trademark and trade practices infringements, and requested the Complainant’s legal representative to “provide full details of the matters on which your client relies in relation to (a) its distribution of the VICTORIA’S SECRET catalogue in Australia and (b) the ‘range of products and associated services’ in relation to which your client’s VICTORIA’S SECRET registered trade mark are used”. It appears that the Complainant never responded to this request.

In this Panel’s opinion, once a reasonable period of time had elapsed without the Complainant providing such information or initiating some legal action, the Respondent was entitled to conclude that the Complainant had ceased to press its allegations of trademark and trade practices infringement. From that time forward, it became possible for the Respondent to acquire a right or legitimate interest in the disputed domain name through subsequent use of it, so long as that subsequent use was bona fide. The present record of this case persuades this Panel that just such a situation arose. In the seven years that elapsed between the Respondent’s unanswered communication and the filing of this Complaint, the Respondent continued to promote its business using the disputed domain name. This continued use of the disputed domain name became bona fide use a reasonable period of time after the Complainant failed to take any further action against the Respondent, because the failure to press the allegations of infringement led the Respondent to understand that the Complainant no longer objected to the Respondent’s behavior. The effect of this subsequent bona fide use of the disputed domain name was that, by the time the Complaint was filed, the Respondent had acquired a right or legitimate interest in the disputed domain name. This Panel thus finds that the Complainant has not succeeded in establishing the requirement of paragraph 4(a)(ii) of the Policy. Accordingly, the Complaint fails.

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. Just as the exceptional circumstances of this case have resulted in the Respondent acquiring a right or legitimate interest in the disputed domain name over time, so might the evolving circumstances result in the Respondent losing that right or legitimate interest. If, for example, the Respondent began using the disputed domain name in relation to a different business, then it may well be that its acquired right or legitimate interest would cease. This is because the Respondent’s right or legitimate interest has arisen due to its almost continual use of the disputed domain name over 10 years in respect of the same business. If the Respondent were to change its use of the disputed domain name following the outcome of this Complaint, then it is quite likely its right or legitimate interest in the disputed domain name would be lost. If that were to occur, the Complainant is likely to be able to bring another complaint in relation to the disputed domain name. As this Panel explained in Creo Products Inc. v. Website In Development, WIPO Case No. D2000-1490, a refiling of a complaint that concerns acts which have occurred subsequent to the decision on the original complaint it is not an action upon which an adjudication has already taken place; rather, it is truly a new action under the Policy, and so is generally permitted.

C. Registered or Subsequently Used in Bad Faith

Given the conclusion above regarding the Respondent’s rights or legitimate interests in the disputed domain name, it is not necessary for resolving the outcome of the Complaint to determine if the Respondent has registered or subsequently used the domain name in bad faith. However, because both parties submitted detailed arguments on this question, brief reference will be made to the issue.

As discussed above, this Panel is persuaded, on the balance of probabilities, that the Respondent knew of the Complainant’s trademark at the time it registered and began using the disputed domain name, and deliberately chose the disputed domain name so its business could benefit from the notoriety of the Complainant’s trademark. In this Panel’s view, the Respondent’s registration of the disputed domain name in those circumstances constituted registration in bad faith. Accordingly, this Panel considers that the Complainant has established the requirements of paragraph 4(a)(iii) of the Policy. The Complaint does not succeed, however, due to the Complainant’s failure to establish the requirement of paragraph 4(a)(ii) of the Policy, as discussed above.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Andrew F. Christie
Sole Panelist
Dated: July 3, 2012