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November 20, 2015

Porn Tube Loses Disputed Domain Name Arbitration-UPDATED

CYBERSPACE—In a decision handed down on Monday by a panel of arbitrators working for the arbitration company Forum, Tenza Trading Ltd., owner of the adult website PornTube.com, lost its fight against WhoIs Privacy Group and its owner, Maksim Iazynin, over WhoIs Privacy's approval of the domain names porntubemovs.net and porntubegals.net. According to the panelists, Michael Albert, David Sorkin, David P. Miranda, in order for Tenza to successfully challenge the granting of the disputed domains, it would have to prove, under the rules laid down for the governance of the internet, that 1) "the domain name registered by Respondent [WhoIs Privacy] is identical or confusingly similar to a trademark or service mark in which Complainant [Tenza] 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." After considering the submissions from both the complainant and the respondent, the panel had little trouble establishing point 1 above, since all the domains in question contain the phrase "porntube" and the challenged domains are also used for adult entertainment, the same business that PornTube is in. As to point 2, WhoIs Privacy argued that the term "porn tube" is so generic that the disputed domains were not doing anything that dozens of other adult sites had also done in referencing the words "porn tube"—and indeed, a cursory Google search for "porn tube" brings up dozens of sites that use those words in describing their sites' content, though few attempt to use the term in the domain name itself. It is likely that latter fact that allowed the arbitrators to find that, "Respondent has failed adequately to establish that Complainant’s mark is generic. The mark has served to position Complainant as one of the most sought-after content providers on the Internet. It has been registered in the United States and other countries without any successful challenge. It has been the subject of considerable expenditures of resources on advertising and promotion, and has generated hits from customers well into the millions, if not billions, based on the evidence adduced by Complainant." The sticking point, though, was point 3. The panel began discussion of this point by noting that, "Given that genericness was, in essence, Respondent’s core defense in this case, it might appear that Complainant succeeds on the third factor—bad faith—as well, and for the same reasons," but for them, however, that was not the determining factor. "The issue, however, is not so simple," the panel's majority stated. "Bad faith has a subjective component. Even though Respondent has not established the mark’s genericness, that does not necessarily mean that Respondent lacked a good-faith belief in the mark’s genericness at the times either of registration or of use or both." The panel then goes on to discuss how WhoIs Privacy might have thought in "good faith" that "porn tube" was a generic term—that Google search mentioned above might easily lead to that conclusion—even though they state, "We have no doubt that Respondent knew of Complainant and its mark, given the fame thereof and the similarity of the industries in which the two entities operate," but later added, "On the other hand, the above facts would be of little import if Respondent genuinely and in good faith believed the mark to be generic. Here, this Panel, on the present facts, cannot conclude that this claim is implausible," based on the evidence provided by WhoIs Privacy. Therefore, since Tenza had failed to prove, to the panel's satisfaction, all three elements required under the rules to invalidate the targeted domain names, the panel ruled that WhoIs Privacy could continue to use the domains—with one caveat. "It may well be that, in a proceeding in a court of competent jurisdiction, Complainant might be able to establish that Respondent could not plausibly have believed in the genericness defense it raises herein," the panel's majority wrote. " Nothing in this Panel’s decision should be deemed to call into question the possibility of such a conclusion, upon review of all relevant evidence." In other words, the panel was saying that this was an arbitration proceeding, and if Tenza sued in federal court, they very well might win—but that didn't stop two of the panelists, Michael Albert and David Sorkin, from denying Tenza the relief it sought, with panelist David P. Miranda filing a dissent to the ruling. "The decision indicates that one party, Tenza, is not going to be able to just steamroll and try to take over the use of the term 'porn tube,' which everybody in the industry uses, so it's an important win for everybody in the industry who does use this term," said Matthew Shayefar, who represents WhoIs Privacy Group in this matter. "And that includes small people like our client in this case to the larger porn tubes on the internet. This was not an issue until about two years ago, when Tenza decided it would try to litigate against people who use the term and have used it for many years—and understand, nobody uses it in order to try to trade off of any capital that PornTube or Tenza has; they use it because that the best description of the product that's offered. And does Shayefar think that Tenza will take the matter further, into federal court? "Well, I think that will be up to Tenza and its attorneys," Shayefar said. "I don't think they have any jurisdiction to take this particular client to trial, but that's up to them to figure out. "But understand, these arbitrators don't have the power to decide whether the mark is generic or not," he added. "A UDRP dispute and proceeding is intended to be a very quick, not in-depth look at all the issues. They have a very small purview, which is to decide on cybersquatting issues, and it's going to be a court of law that will decide whether the 'porn tube' mark is generic or otherwise, and there was a large lawsuit that was settled early this year... and eventually there's going to be a court that decides whether the mark is valid or not. The arbitrtators were forced to assume that the mark is valid even though there is lots of evidence to the contrary, and the only reason they're forced to do that is because Tenza renewed the trademark registration when nobody was looking, pretty much." At press time, Tenza attorney Anna Vradenburgh was not available for comment. The complete arbitration panel report can be found here.

 
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