Respondents have a heavy burden in proving rights or legitimate interests in domain names for purveying pornographic content identical or confusingly similar to a trademark. Correspondingly, the complainant’s burden is lightened in proving bad faith. The question in these cases is whether the respondent had the complainant or its trademark in mind when it registered the domain name; and even if it did not, whether the use of the domain name for that purpose establishes bad faith registration? With international brands and famous names, evidence of targeting is manifest in the trademark chosen. There is a telling observation in David Green v. cafeinternet.com E-mail Services, NA NA, D2010-0425 (WIPO May 25, 2010) that “the textual string of the disputed domain name <cafeinternet.com> does not call to mind any generic or descriptive association with an adult-content website.” This is an ironic analogue for expressing the often stated principle applied to domain names composed of generic words or descriptive phrases that it is bad faith to register and use domain names for their trademark value.

Generally, regardless of the subject matter of the website and as long as there is no infringement of the complainant’s rights, “[domain names] registered because of their attraction as dictionary words, and not because of their value as trademarks [do not contravene the Policy],” The Landmark Group v. Digimedia L.P., FA 285459 (Nat. Arb. Forum August 6, 2004) (<landmarks.com>). This principle carries over into pornographic websites. As the Panel in Sound Unseen, Ltd.; Apple Bottoms, LLC; and Cornell Haynes p/k/a “Nelly” v. Patrick Vanderhorst, D2005-0636 (WIPO August 18, 2005) states, “display of pornographic imagery on a web page, without more, no matter how offensive, repulsive or antithetical to contemporary society mores – and some of Respondent’s imagery certainly falls within that rubric – does not as such constitute bad faith under the Policy.” Indeed, “adult sex sites are perfectly legal and constitute bona fide offerings of goods or services,” Motorola, Inc. vs NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000).

However (the Panel in Sound Unseen continues) :

[B]ad faith under the Policy may very well arise where a domain name, which infringes on the mark of another by virtue of being identical or confusingly similar to that mark, is used by a respondent as an instrumentality to intentionally link and direct unsuspecting users, who seek information on a good or service associated with that mark, to a pornographic site instead. In such instances, those users would not be exposed to a respondent’s pornographic content but for that linkage.

The split decision in David Green — some commentators have found the majority’s reasoning puzzling — is understandable because the record did not unequivocally and concretely establish that in registering the disputed domain name the Respondent had the Complainant’s trademark in mind; the website had also been operating for 13 years without objection which made the having in mind connection less than convincing. Even so, the dissenting member recognized that “this was a close call.” For the majority, the facts that tipped the scale lie not in or not specifically in the commonness of the name “café internet” but in the Respondent’s failure to comply with its registration duties to maintain accurate disclosure of its identity. “Respondent has failed to provide details of its true name or identity…. These facts suggest that Respondent provided a false name and false contact details in an effort to make identification and communication impossible, thereby supporting a finding of bad faith in this particular case.” The dissent did not condone Respondent’s failure but rested his conclusion on the paucity of the record.

Lacking right or legitimate interest in the disputed domain name and, according to the majority in David Green, “linking [it] to adult-oriented websites is a widely accepted evidence of use in bad faith.” While the decisions cited by the majority for this proposition are hardly conclusive it is true that a pornographer has to demonstrate a clean record even in equivocal circumstances where it may even have registered the domain name before the trademark, that it is in compliance with its registration duties and is using the domain name in its dictionary sense. For example, the Respondent in CHRISTIAN DIOR COUTURE v. Paul Farley, D2008-0008 (WIPO February 2, 2008) (she “offers bondage, discipline and sado-masochism services … to customers in the San Francisco Bay and Washington D.C. areas of the United States”) is known by her stage name “Anna Dior”, hence she passes her legitimacy test for <annadior.com>.

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