Victoria's Cyber Secret v. Secret Catal.

• Decision Date: 10 September 2001
• Docket Number: No. 01-1095-CIV.,01-1095-CIV.
• Citation: 161 F.Supp.2d 1339
• Court: U.S. District Court — Southern District of Florida
• Parties: VICTORIA'S CYBER SECRET LIMITED PARTNERSHIP, Plaintiff, v. V SECRET CATALOGUE, INC., Victoria's Secret Direct, LLC, Victoria's Secret Stores, Inc., Intimate Beauty Corporation, d/b/a Victoria's Secret Beauty, Defendants/Counterclaimants.

161 F.Supp.2d 1339

VICTORIA'S CYBER SECRET LIMITED PARTNERSHIP, Plaintiff, v. V SECRET CATALOGUE, INC., Victoria's Secret Direct, LLC, Victoria's Secret Stores, Inc., Intimate Beauty Corporation, d/b/a Victoria's Secret Beauty, Defendants/Counterclaimants.

No. 01-1095-CIV.

United States District Court, S.D. Florida.

September 10, 2001.

COPYRIGHT MATERIAL OMITTED

David Michael Goldstein, Miami, FL, for Plaintiff.

Arnaldo Velez, Law Offices of Arnaldo Velez, P.A., Coral Gables, FL, for Defendants/Counterclaimants.

Frank J. Colucci, David M. Dahan, Colucci & Umans, New York, NY, for Defendants/Counterclaimants.

ORDER GRANTING SUMMARY JUDGMENT FOR DEFENDANTS/COUNTERCLAIMANTS

JAMES LAWRENCE KING, District Judge.

THIS MATTER is before the Court upon the motion for summary judgment filed by Defendants/Counterclaimants V Secret Catalogue, Inc., Victoria's Secret Direct, LLC, Victoria's Secret Stores, Inc. and Intimate Beauty Corporation d/b/a Victoria's Secret Beauty (collectively "Defendants" or "Victoria's Secret") filed May 23, 2001, and, after briefing by both sides, orally argued August 7, 2001.

I. PROCEDURAL BACKGROUND

Victoria's Cyber Secret Limited Partnership (hereinafter referred to as "Plaintiff" or "VCS") commenced this action for a declaratory judgment on March 19, 2001. VCS owns four Internet domain names: "victoriassexsecret.com," "victoriassexysecret.com," "victoriasexsecret.com," and "victoriasexysecret.com". VCS sought declaratory judgment of its rights under 28 U.S.C. §§ 2201-2202 and an interpretation of whether or not its ownership of the disputed domain names violated 15 U.S.C. §§ 1051-1127 (the Lanham Act). The complaint asked further, in Count II, for a declaration by the Court that VCS's ownership and use of the disputed domain names did not violate the Internet Corporation for Assigned Names and Numbers Uniform Policy Rules for Domain Name Dispute Resolution (the "ICANN Policy").¹

Count III of VCS's Complaint sought a declaration of their rights as to trademark and service mark infringement, unfair competition, false advertising, passing-off, and dilution, alleging that its ownership and registration of the disputed domain names did not create a violation of any law, federal or state, and that VCS was therefore entitled to use the domain names free from any interference by Defendants.

In their Answer, Victoria's Secret counterclaimed against Plaintiff VCS alleging federal trademark infringement, unfair competition, dilution, and violation of the Anticybersquatting Consumer Protection Act under the Trademark Act of July 5, 1946 (commonly referred to as the Lanham Act), 15 U.S.C. § 1051, et seq., as amended; 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). Further, Defendant sought relief for related state and common law violations of trademark infringement, dilution, unfair competition, and unfair and descriptive trade practices, under 28 U.S.C. § 1367.² The Answer to the Complaint and Counterclaim by Defendants were filed May 17, 2001.

On the following day, May 18, 2001, the Defendants filed a plethora of pleadings directed to its subsequently filed (May 23, 2001) motion for summary judgment.³ Plaintiff VCS, responded to Defendants' Motion for Summary Judgment on June 29, 2001⁴

After full briefing by both sides, the issues raised by Defendants' Motion for Summary Judgment was orally argued August 7, 2001. According to the Clerk's docket sheet record of the filings in this case, no depositions or other discovery have been conducted by either side.

II. STATEMENT OF UNCONTESTED FACTS

Victoria's Secret is the dominant lingerie brand in America and signifies a leading source of apparel and personal care products offered under the VICTORIA'S SECRET Mark.⁵ Victoria's Secret sells its merchandise in its own Victoria's Secret retail stores, catalogue and on its website. More than 1300 Victoria's Secret lingerie and beauty stores are in operation across the country. (Beraud Decl., ¶ 3.) The Victoria's Secret catalogue circulates hundreds of millions of issues annually. (See Pozy Decl., ¶ 3.) In addition, the Victoria's Secret website, www.victoriassecret.com, is one of the most popular and profitable in e-tailing. (See Mitchell Decl., ¶ 6; Pozy Decl., ¶ 9.)

The Victoria's Secret brand is heavy advertised. (See Beraud Decl., ¶¶ 6-8; Pozy Decl., ¶ 10.) Victoria's Secret merchandise is extensively advertised on an ongoing basis through all media, including primarily, but not limited to, catalog mailings, the internet, print, television and international fashion shows. (See Pozy Decl., ¶¶ 6-9, Beraud Decl., ¶¶ 6-8.) Victoria's Secret stores sells primarily intimate apparel and personal care products, while Victoria's Secret Direct, through the Victoria's Secret catalog, sells a broader range of outerwear such as swimsuits and accessories in additional to intimate apparel. (See Beraud Decl., ¶ 3; Pozy Decl., ¶ 2.) Total merchandise sales through the Victoria's Secret stores and the Victoria's Secret catalog, for the year 2000 alone, approached 3 billion dollars. (See Beraud Decl., ¶ 5; Pozy Decl., ¶ 8.)

The VICTORIA'S SECRET Mark has been used continuously by Victoria's Secret in the United States since at least 1982, is registered with the United States Patent and Trademark Office, and has come to symbolize the enormous goodwill of Victoria's Secret and its merchandise in this country as well as throughout the world. (See Mitchell Decl., ¶¶ 2, 7; Lyons Decl., ¶ 3.)

Victoria's Secret Stores, Inc., Victoria's Secret Direct, LLC and Intimate Beauty Corporation are the exclusive United States licensees of V Secret Catalogue, Inc., which is the record owner of the VICTORIA'S SECRET Mark registered in the United States Patent and Trademark Office ("PTO") for a variety of goods and services. (See Lyons Decl., ¶ 3.) Each of Victoria's Secret's registrations are valid, subsisting and now in full force and effect. (See Lyons Decl., ¶ 4.)

As a result, the VICTORIA'S SECRET Mark has become and is now a well-known and famous mark.

On May 5, 1998, Plaintiff VCS registered four domain names to be used as adult entertainment internet sites. Between May 1998 and January 2001 Plaintiff did not use the domain names or launch any websites connected to the names.

In May of 2000, Victoria's Secret sent Plaintiff VCS a cease and desist letter (Complaint, Ex. A). VCS responded by stating in an e-mail to Victoria's Secret's counsel that "[t]he aforementioned web address(es) are available for your company(s) to take into their possession, upon your legal representative(s) delivering an amicable transfer agreement to our Legal Counsel ...." Counsel for Victoria's Secret sent the registrant name change agreements to Plaintiff's counsel, but neither Plaintiff nor Plaintiff's counsel returned the signed agreements to Defendants' counsel. (Colucci Decl., ¶ 5, Ex. B.)

On January 22, 2001, Victoria's Secret filed a petition to the National Arbitration Forum ("NAF") pursuant to the ICANN Policy to prevent Plaintiff from continuing to use Plaintiff's domain names.

On March 9, 2001, the NAF decided that Plaintiff's registration of Plaintiff's domain names would result in confusion with Defendants' VICTORIA'S SECRET Marks:

Further, Respondent's domain name is confusingly similar because a reasonable Internet user seeking [Victoria's Secret's] mark would assume that [Plaintiff's] domain name is somehow associated with [Victoria's Secret's] famous mark. [NAF Citation Omitted]

The panel finds that [Plaintiff's] domain names are confusingly similar to [Victoria's Secret's] well-established mark and family of marks.

(Colucci Decl., Ex. 12.)

The NAF ordered Plaintiff to transfer its four domain names to Defendants. Plaintiff did not comply with the NAF order.

This motion for summary judgment presents the Court with the same issue as that faced by the NAF, namely, whether Plaintiff's registration of Plaintiff's domain names is likely to result in confusion with Defendants' VICTORIA'S SECRET Mark, and whether Plaintiff's actions in registering domain names which incorporate Defendants' famous VICTORIA'S SECRET Mark, constitute cybersquatting, and are likely to dilute the VICTORIA'S SECRET Mark. In addition, Defendants present an issue involving Plaintiff's use of its trade name not presented to the NAF.⁶

As recently as March 19, 2001, this Court rendered a decision involving the very Defendants now before the Court in a strikingly similar case captioned Nino Chandnani v. V Secret Catalogue, Inc., Intimate Beauty Corporation, Victoria's Secret Stores, Inc. and Victoria's Secret Catalog, L.L.P., Case No. 00-7820-CIV-FERGUSON, 2001 WL 586692 (S.D.Fla. 2001) ("the Chandnani decision," attached hereto as Exhibit 1).

In Chandnani, the declaratory-judgment Plaintiff sought a declaration that its domain name registration of Victoriassecret-watches.com did not infringe Defendants' VICTORIA'S SECRET Mark, a contention the Court rejected by issuing a Temporary Restraining Order against the Plaintiff on the basis of the domain name's confusing similarity with, and dilution of, Defendants' VICTORIA'S SECRET Mark.

III. CONTESTED FACTS

There appeared to be few, if any, material contested facts.

All of the statement of facts reflected in Section II of this opinion are not in any substantial dispute between the parties. Careful review of the Schmitt Affidavit, Plaintiff's Statement of "Disputed Facts" and Memorandum of Law submitted in opposition to Defendant's Summary Judgment clearly reflect Plaintiff's substantial agreement with all of the factual allegations set forth above. Namely, there is no dispute over the physical acts taken by both parties in registering their marks and domain names, the "famousness" of the VICTORIA SECRET Mark, or the actual or intended uses of both parties with respect to their claimed property rights in the mark and domain names. In the same vain, there is no contest over Defendant's billion...