Domain-name registrants who sit on their rights rather than go after trademark infringers do so at their peril. In a case decided last July, an arbitrator for the World Intellectual Property Organization (WIPO) held that a foreign registrant’s bad-faith registration and continued use of an infringing domain name, at some point, transformed into legitimate use. As a result, the trademark holder, Victoria’s Secret, was denied any relief under Australia’s version of the Uniform Domain Name Dispute Resolution Policy (auDRP).
In May 2012, lingerie retailer Victoria’s Secret filed a complaint with WIPO seeking cancellation or transfer of the domain name “victoriassecrets.com.au,” which allegedly had been routing Victoria’s Secret customers to an escort service based in Sydney, Australia. As required under the auDRP, Victoria’s Secret alleged all three prongs required for relief: (i) a domain name that is identical or confusingly similar to a valid trademark; (ii) illegitimate use; and (iii) bad faith.
First, Victoria’s Secret alleged that the infringing domain name was confusingly similar to the company’s trademark, which had been registered in the United States since 1977 and in Australia since 1990. Indeed, the infringing domain name incorporated Victoria’s Secret’s entire trademark, simply adding an “s” at the end. The company further alleged that the Australian women who registered the domain name had intentionally used Victoria’s Secret’s brand and image to promote prostitution.
Second, Victoria’s Secret claimed that the Australian escort service had no rights or legitimate interests in the domain name: the escort service was not known by the name “Victoria’s Secret,” the service was not authorized to use the trademark, the registrants were not using the name in connection with a bona fide offering of services, and they were not putting the name to legitimate non-commercial or fair use.
With respect to the “bad faith” prong, Victoria’s Secret alleged that the respondents had registered and used the name to deceive Internet users into believing the lingerie company was a source, sponsor or affiliate of the escort service. Victoria’s Secret further alleged that given its previous registration and worldwide customer base, the registrants knew their domain name would cause confusion.
What’s more, the registrants intended to trade on the confusion and, in the process, tarnished the lingerie company’s reputation.
The WIPO arbitrator agreed — for the most part. With seemingly no hesitation, he found for the complainant on the first and third prongs. He stated that the disputed domain was “confusingly similar” to Victoria’s Secret’s trademark. Moreover, he found that the registrants “knew of the Victoria’s Secret trademark at the time they registered and began using the domain name” and that they “deliberately chose” the domain so that their escort business would benefit from the resulting confusion. Nonetheless, the arbitrator held that Victoria’s Secret was not entitled to relief.
In his view, Victoria’s Secret had failed to show that the escort service had no legitimate interest in the domain. According to the arbitrator, evidence submitted by the parties showed that the registrants had been using the disputed domain name for almost 10 years and, more importantly, that Victoria’s Secret had been aware of the infringing use for seven years prior to filing the complaint. Although Victoria’s Secret had issued a couple of cease-and-desist letters in 2005, the company ultimately decided not to pursue the matter. At some point after that, the escort service obtained a legitimate interest in using the domain. In the arbitrator’s words:
[Victoria’s Secret’s] 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.
The arbitrator added that if the Australian registrants were to change their use of the domain name following the decision, their legitimate interest in the domain would very likely be lost.
It will be interesting to see if other arbitration panels follow suit. Whatever the case, Victoria’s Secret is probably keeping a close watch on the domain while considering potential alternatives for relief.