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« From Law School to Solo: Is it Criminal? | Main | Flipping 'the Bird' Is Protected Speech »

WIPO Rules in Fight Over 'Virtual Sex'

It was the battle of the Internet porn sites at the World Intellectual Property Organization as two California companies sparred for rights to the domain name "virtualsex.com." In one corner was the company that claimed to have coined the term "virtual sex." In the other was the company that first registered the domain. In a decision issued this week, a WIPO arbitrator let the company that registered the domain hold onto it.

The arbitration followed from a complaint filed by Digital Playground Inc. of Chatsworth, Calif. The decision describes Digital as a leading producer of adult films with more than 40 percent share of the adult DVD market. It claimed to have coined the term virtual sex in 1994 in connection with a series of films released then as the "Virtual Sex Series." In 2000, it applied for a trademark on the term virtual sex, which it received in 2005.

Meanwhile, another California company, Network Telephone Services, registered the domain in 1995. Later that year, it set up a Web site using the domain at which it sells adult DVDs and access to adult webcams and chat rooms. Its principals said they had no knowledge of the other company's use of the term and considered it generic.

The arbitrator sided with Network Telephone, concluding that it did not register the domain in bad faith. "The diverse offerings available on the web site to which the domain name at issue resolves suggest that Respondent is trading on the descriptiveness of the term 'virtual sex,' rather than on the goodwill attached to Complainant’s mark," the arbitrator wrote. He also cited Digital's delay in challenging the domain as an additional ground for dismissing its complaint. "The fact that Complainant did not bring this action until 14 years after Respondent had registered the domain name at issue and more than 13 years after Respondent had used the domain name at issue to resolve to a web site at which products competitive to those offered by Complainant, as well as products entirely different from those offered by Complainant, is not explained by Complainant."

[Hat tip to Threat Level.]

Posted by Robert J. Ambrogi on March 25, 2009 at 02:03 PM | Permalink | Comments (3)