Facts
Victoria’s Secret (hererinafter referred to as “VS“) starts to sell its products in China since 1997. It has registered or purchased the “VICTORIA’S SECRET” trademark in Class 39, 42, 3 and 25 in China in 1995, 1997 and 2011 respectively. VS registered the domain name “victoriassecret.com” and has been using such domain name for its official website.
In 1999 and 2003, a Chinese woman Madam Wang registered the domain names “victoriassecret.com.cn” and “victoriassecret.cn” in her own name and used such domain names to set up websites to publish commercial advertisement, promotion and social information.
VS found out that Madam Wang had squatted many famous brands including Nike, Converse, Dupont, P&G, L’OREAL etc., which had been judged as infringing by several Chinese courts.
VS claimed that Madam Wang’s registration of the disputed domain names could mislead the consumers in China that her websites were owned by VS and therefore has infringed its trademark right towards “VICTORIA’S SECRET” and has constituted unfair competition against VS.
VS asked the court to order Madam Wang to stop the infringement activities, transfer the disputed domain names to VS, and the pay the compensation of RMB 200,000 to VS.
Defense
Madam Wang defended that:
- she registered the disputed domain names in 1999 and 2003, at that time, VS did not even enter into the China market and therefore was not known to the Chinese people. She did not have any bad faith to register such domain names;
- the “VICTORIA’S SECRET” trademarks are not well-known trademarks in China and therefore her domain names cannot infringe the trademark right of VS;
- the company name of VS cannot be an obstacle for her to register the disputed domain names because they are irrelevant under Chinese laws;
- she is not obliged to pay any compensation to VS because she did not infringe the trademark right of VS.
Decision of the court
After hearing, the Chaoyang court in Beijing decides that:
- the earliest registration date of the “VICTORIA’S SECRET” trademark owned by VS is earlier than the registration date of the disputed domain names owned by Madam Wang and the “VICTORIA’S SECRET” brand has enjoyed high popularity in China after long term marketing and promotion in China. As the result, VS’ trademark right towards the “VICTORIA’S SECRET” trademark should be regarded as prior legal rights which should be protected by the Chinese laws.
- Madam Wang used the prior registered “VICTORIA’S SECRET” trademark with high popularity in China as the main part of her domain names. Such action could be misleading to the Chinese consumers and has taken advantage of the goodwill of VS. Further, such action has prevented VS from registering its trademark as .cn domain names in the most neat and complete form, which caused the failure of VS to use such domain names for commercial activities in China.
- Madam Wang failed to prove that she enjoyed any legal rights towards the disputed domain names and did not reasonably use such domain names. Her action cannot be justified.
- Madam Wang had several domain name disputes with internationally well-known companies before and she was determined as having bad faith by several Chinese courts. As such, it can be inferred that she had bad faith in registering the disputed domain names in this case.
- Madam Wang’s action should be determined as an unfair competition against VS but did not infringe the trademark right of VS.
Finally, the Chaoyang court determines that Madam Wang should stop using the disputed domain names and compensate RMB 100,000 to VS for its economic loss and expenses. The disputed domain names should be owned by VS.
After the judgement, VS did not appeal and Madam Wang is still considering whether to appeal.