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Pretending Association with Trademark Holder to Draw Traffic

ICANN’s decision to approve the .xxx suffix for websites with pornographic content is essentially a zoning resolution. It has the same intention, namely to confine adult content to its own district to prevent its contaminating better neighborhoods. Offering pornography is not condemned under the Policy. “The mere fact that a domain name resolves to a website featuring adult content does not per se render the registrant devoid of rights or legitimate interests in the domain name,” West Corporation v. Domain Admin c/o Mrs Jello, LLC, FA1004001321540 (Nat. Arb. Forum June 14, 2010).

Condemned is associating “adult content” with the complainant’s trademark and piggybacking on its reputation. V&S Vin & Sprit AB is not amused when ABSOLUT is coupled with “porn” to produce <absolut-porn.com>, V&S Vin & Sprit AB v. VCN – Whois Protection Service Panama, D2010-0715 (WIPO June 25, 2010), or “escorts” to produce <absolutescorts.com>, V&S Vin & Sprit AB v. N/A, D2010-0717 (WIPO June 14, 2010). Adding a common word to a trademark does not create a distinguishable name, and since the parties are in different industries there is no defense of fair use, nominative or otherwise.

The unregistered trademark in Workers United Union v. Wesley Perkins, D2010-0738 (WIPO June 20, 2010) barely passes the threshold test. The Complainant was only formed in 2009, but has over 150,000 members. Nevertheless, the Panel found that it had standing because it had “used the name WORKERS UNITED as the common trade name or trade mark for the trade union.” More significantly, the Complainant had owned and inadvertently allowed its domain name to lapse. “[E]very case” (the Panel noted) “must be considered on its own facts and merits.” In this particular case

Had the Disputed Domain Names merely constituted generic words without a history of immediate prior use and had the Respondent parked the Disputed Domain Names to a blank holding page his explanation might have been more credible. However in the circumstances that the Disputed Domain Names were not plainly generic and had been in immediate prior use and that the Respondent chose to defer the Disputed Domain Names to a pornographic website while demanding a considerable sum of money for their transfer…

The Complainant in Workers United approached the Respondent “immediately after realizing that its domain name had expired… [M]any of its 150,000 members were probably still trying to contact on its email address using the Disputed Domain Names.” The Respondent freely admitted “that he acquires domain names for the purposes of trading” and in this particular case demanded $28,000 to transfer it. “Meanwhile, every time that the Complainant’s members tried to log onto its original website they were deferred to a blatantly pornographic website.”

Particularly with adult oriented websites Panels give lesser known trademarks more leeway (as long as they are not composed of dictionary words). Moreover, threats to offer (no less displaying) pornography through the disputed domain name, the trademark well known or not, is a sufficient basis for finding bad faith use; from which bad faith registration is inferred. Threatening and offering can be seen as tantamount to a demand for ransom, which would be an additional basis under for finding bad faith.

Levine Samuel, LLP. <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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