LOS ANGELES—A June 6 decision by a three-panelist tribunal for the National Arbitration Forum ordered the transfer of 13 domains owned by Calista Enterprises Ltd. that contain the PORNTUBE mark to Tenza Trading Ltd., which owns and operates PornoTube.com. The vote was 2-1, with the dissenting panelist, Paul DeCicco, citing UDRP rule 18(a) to argue the panel should have waited until a challenge to Tenza’s trademark application, approved on February 16, 2011, was completed. The two other panelists, Hugues G. Richard and David P. Miranda, decided the original trademark registrations sufficed and followed through on their decision based on the following three criteria:
(1) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
The first criterion was dispensed with quickly; even Calista admitted there was no confusion. After all, the domains in contention—largeporntube.com, goldporntube.com, kissporntube.com, boxporntube.com, pipeporntube.com, 69porntube.com, royalporntube.com, bookporntube.com, cubeporntube.com, freshporntube.com, lustporntube.com, bonusporntube.com and directporntube.com—all contain “porntube” in them. They were also all affiliates of PornTube.com and other tube sites.
The second criterion is the most interesting. The panel found that none of the 13 challenged domains engaged in a “bona fide offering of services,” even though they had been active affiliates for years, having been paid by PornoTube.com “in excess of $132,140 over a period of 20 months… through the affiliate program.” Calvista had argued that Tenza Trading "knew of, fostered, encouraged, rewarded and profited from [Calvista's] use of the disputed domain names for years."
But the panel found that affiliate websites, in driving traffic, do not actually provide goods or services. “The use of domain names to direct Internet users to a commercial website (including the Complainant’s) under an affiliate program is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii),” they wrote, adding, “Furthermore, it is difficult to find a bona fide offering when the Respondent uses without permission a domain name confusingly similar to a competitor’s mark.”
Policy ¶ 4(c)(i) states that a challenged domain owner legitimate interest in the domain if it “can prove before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
Policy ¶ 4(c)(iii) adds, “You are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Not giving weight to 20 months of affiliate relationship, the two panelists also found that Calista acted in bad faith for two reasons. First, they said, “Respondent was aware of the Complainant’s use of the PORNTUBE mark,” and second, Calvista used “the disputed domain names to confuse consumers and to attract Internet traffic to its website, in order to receive commercial profit from third parties whose websites are linked to the Respondent’s domain names. This demonstrates bad faith. The fact that the Complainant’s website is among those third party websites is irrelevant as to the present inquiry.”
Tenza Trading Ltd. was represented by Anna M. Vradenburgh of The Eclipse Group, LLP, California, USA. Calista Enterprises Ltd. was represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA.
All facts on the record, the prevailing opinion and the dissent can be read here.