Victoria's Secret prevails over 'sexy' cybersquatter

Facts
Decision

The US District Court for the Southern District of Florida upheld the rights of the registrant of a famous trademark against the infringing domain names of a cybersquatter. Judge James Lawrence King granted summary judgment to V Secret Catalogue Inc (Victoria's Secret), the owner of the trademark VICTORIA'S SECRET in a case brought by Victoria's Cyber Secret Limited Partnership (VCS).

Facts

VCS registered the domain names 'victoriassexsecret.com', 'victoriassexysecret.com', 'victoriasexsecret.com' and 'victoriasexysecret.com', to be used in connection with adult content websites. At the time of the suit, it had not used the domain names or launched any sites connected to the names. VCS sought a declaratory judgment that its ownership of the names did not (i) violate the Lanham Act or the rules of the Internet Corporation for Assigned Names and Numbers, or (ii) constitute trademark infringement, unfair competition or advertising, passing off or trademark dilution under federal or Florida State law.

VCS claimed that it intended to use the domain names for a website that would profit from the notoriety of the 1997 Playboy Playmate of the Year, Victoria Silvstedt. However, Silvstedt had terminated her relationship with VCS, stating that it had no rights to continue to use her name or likeness.

Victoria's Secret counterclaimed.

Decision

The court found that VCS violated the federal Anticybersquatting Consumer Protection Act. The court also found trademark infringement, unfair competition and trademark dilution - all in violation of the Lanham Act. In addition, the court concluded that Florida statutory and common law regarding trademarks had been violated. The court based this decision on its finding that the VICTORIA'S SECRET trademark is distinctive and famous, and that VCS had bad faith intent to profit from the mark by registering domain names that were confusingly similar to the mark. Judge King added: "VCS's contention that the addition of 'sex' or 'sexy' to the VICTORIA'S SECRET mark serves to dispel similarity and confusion is completely without basis."

The court awarded Victoria's Secret statutory damages of $10,000 for each bad faith registration, which it then trebled for a total of $120,000 in damages, and attorney's fees, and required VCS to transfer the domain names to Victoria's Secret.

The case demonstrates that under the Lanham Act, the addition of generic or minor words to a trademark (especially one that is famous) is not sufficient to avoid a finding of likelihood of confusion under federal trademark law.

William Tanenbaum and Randall Stempler, Kaye Scholer LLP, New York

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