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Disputed Domain Name for Adults Only

Complainant owns various trademark registrations for the mark "VIRTUAL SEX", with the first application filed in April 2000 and a first use in commerce dating back to 1994.  Complainant, which is female owned and operated, is a leading producer of "adult" films and has more than a 40% market share of the adult DVD market.

Respondent registered the disputed domain name, "virtualsex.com", on August 24, 1995 and set up a website for the sale of adult content DVDs, strip club webcam sites, sex chat rooms, adult dating services and "adult toys".  The site was established more than 13 years ago.

Respondent conceded that the disputed domain name is confusingly similar to Complainant's mark but made the contention that the mark is invalid as either "generic" or "merely descriptive".  In fact, Respondent claimed that he thought the disputed domain to be a generic term at the time of its registration.  Nonetheless, the general rule is that registration of a mark is prima facie evidence of validity and it is Respondent's burden to rebut that presumption, which Respondent failed to do. 

Denying the Complaint, the Panel held that a finding of Respondent's lack of rights or legitimate interests in the mark would turn on its analysis of the bad faith issue.  While Complainant alleged that it had acquired secondary meaning in the mark by August 1995 (when Respondent registered the domain), it failed to produce any evidence to support its allegation.  Moreover, Complainant failed to explain why it did not bring this action until 14 years after Respondent's registration of the domain and more than 13 years after Respondent had used the domain to resolve to a website at which products competitive to those offered by Complainant, as well products entirely different from those offered by Complainant, were offered for sale. Based upon the Panel's review of Respondent's website, it further concluded that its "diverse offerings" suggested that Respondent was trading on the descriptiveness of the term "virtual sex", rather than any goodwill attached to Complainant's mark.  In light of all these factors, the Panel held that Complainant failed to establish that the disputed domain name was registered and used in bad faith.  Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup, WIPO Case No. D2009-0105

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