Victoria's Secret victorious in three states

Victoria Zdrok may have both brains and beauty, but she no longer has the domain name '', pursuant to a decision issued by the US District Court for the District of New Jersey in Zdrok v V Secret Catalogue, 2002 US Dist LEXIS 14779 (D NJ August 13 2002).

Zdrok, who has a Juris Doctor degree, a Masters degree in psychology, and is pursuing a PhD in clinical psychology, is also known for her appearances as a nude model in Penthouse and Playboy. She registered the domain name '' for an interactive website devoted to her nude modelling career. Although she changed her website location to '', she kept the old domain name and used it to link to the new website.

In January 2001 Victoria's Secret filed an action in the US District Court for the Southern District of Ohio, alleging that Zdrok violated its trademark rights. Zdrok's attorney in California wrote the court a letter stating that Zdrok could not afford to hire local counsel, as required by Ohio local rules. The court treated this as a request to proceed without local counsel, but denied the request. Four days later, the court:

  • entered a default judgment in favour of Victoria's Secret;

  • awarded Victoria's Secret $100,000 in damages; and

  • enjoined Zdrok from using the disputed domain name.

Instead of appealing that decision, Zdrok tried to void the Ohio court's default judgment by filing a collateral attack in the US District Court for the Central District of California. On August 1 2001 the California court granted Victoria's Secret's motion to dismiss, noting that the district court in Ohio was the proper forum for this action.

Despite this ruling, Zdrok filed yet another action - almost identical to the one dismissed in California - in New Jersey, her home state. She also hired local counsel. Victoria's Secret again moved to dismiss the action on the basis that the California court's order precluded Zdrok from bringing the action anywhere but in the southern district of Ohio.

The New Jersey court agreed with Victoria's Secret and dismissed Zdrok's action. The court ruled that the action was barred by claim preclusion because:

  • a final judgment on the merits was rendered in a prior suit;

  • the same parties were involved; and

  • the subsequent suit was based on the same cause of action as the original suit.

Much can be learned from Zdrok's mistakes in this case. First, she was unwise to ignore the ruling of the California court stating that Ohio was the proper forum to challenge the Ohio district court decision. Second, the fact that she hired local counsel in New Jersey discredited her argument that she could not afford to hire local counsel in Ohio. In addition, Zdrok's counsel in California should have challenged the Ohio court's decision directly to the US Court of Appeals for the Sixth Circuit rather than file collateral attacks in California and New Jersey. This complex case may not yet be over as Zdrok still has this option.

For discussion of another case involving Victoria's Secret, see Victoria's Secret prevails over 'sexy' cybersquatter.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff LLP, Washington DC

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