Brothel beats Victoria’s Secret in titillating domain name dispute

…and it’s seriously a fascinating UDRP case.

An Australian brothel has rebuffed an attempt by lingerie retailer Victoria’s Secret to take its domain name VictoriasSecrets.com.au.

The decision was handed down on a couple weeks ago and a Domain Name Wire reader just brought the case to my attention.

The subject matter certainly makes for an interesting story, but the story goes much deeper than that.

Let’s get the fun stuff out of the way: the respondent sent a porno mag to the panelist to show its use of the name and argued that its services (prostitution) were completely different from the famous retailer (lingerie).

Here’s one of my favorite lines in the decision, whereby Victoria’s Secret apparently argued its products are related to prostitution:

…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…

Alright, now on to the part that will be titillating to UDRP lawyers everywhere: the panelist kinda-sorta approved laches as a defense in UDRP. And that panelist is Andrew Christie.

If you aren’t familiar with Christie, he’s the panelist who frequently argues that domain registrants who didn’t register domains in bad faith but later used them in bad faith are in violation of UDRP. In other words, you’re in violation of UDRP if you register OR use your domain in bad faith.

In the present case, he found that the brothel likely registered its domain to benefit from the famous Victoria’s Secret. Yet he also determined that, due to a delay by Victoria’s Secret in bringing the dispute, the brothel had acquired a right or legitimate interest in the domain by using it so long.

The case hinges on a couple cease and desist letters Victoria’s Secret sent to the escort service in 2005. The Australian brothel responded to the second letter denying its infringement and asking the retailer for more information. The retailer never responded.

Here’s how Christie explains it:

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.

I’m sure most UDRP watchers never thought Christie would find a way to massage the UDRP to find in favor of a respondent.

But upon further reflection, it kind of makes sense that Christie would rule this way.

Christie’s opinion on registering or using a domain in bad faith essentially claims that whether or not a domain registration violates the policy can change over time. Here, he’s saying the same thing about having rights or legitimate interests.

In fact, he notes that the brothel’s rights or legitimate interests in the domain name could later cease if it changed how it used its domain (e.g. to sell lingerie).

UDRP geeking aside, I’d bet good money this is the first time a UDRP panelist has received a copy of Penthouse as an exhibit.