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

Domain Name Auction

In this WIPO dispute, the Complainant is Margaret C. Whitman, the President and CEO of eBay, Inc. from March 1998 through March 2008.  Ms. Whitman remains on eBay's Board of Directors and is a stockholder.  The Complainant is described in the Complaint as an Internet pioneer and businessperson whose name is internationally famous and synonymous with the accomplishments of eBay.  The Respondent, Domains For Sale, registered the disputed domain names, www.megwhitmanforgovernor.com, www.megwhitman2010.com, www.meg2010.com, www.whitmanforgovernor.com and www.whitman2010.com, between January 28 and March 28, 2008, at which time there was wide speculation in California and elsewhere that the Complainant would run for election as Governor of California in 2010.

 The Complainant claims common law service mark rights in her personal name 'MEG WHITMAN' due to her fame and achievement, the international recognition and wide publicizing of her fame and achievement and further claims that her fame and achievement are inextricably connected to eBay's commercial success.  The Respondent did not respond to the Complaint. 

Merely having a "famous" name is not sufficient to establish common law trademark or service mark rights in the name.  In cases involving entertainers, authors, professional athletes and to a lesser extent business persons, complainants have been found to have common law marks in their names in circumstances where the name has been used as a marketable commodity, for a fee to promote another's goods or services, or for direct commercial purposes in the marketing of the complainant's own goods or services.  The law of publicity gives well-known individuals the right to control commercial exploitation of their names and likenesses.  However, for common law trademark rights to exist, the personal name must have come to be recognized by the public as a symbol which identifies particular goods or services with a single source.  In this instance, the Panel was unable to conclude that the Complainant had common law service mark rights in her personal name because she did not provide services to the public under the name 'MEG WHITMAN' as a source-indicator to the segment of the public based on her performance as President and CEO of eBay.  Accordingly, the Panel concluded that the Complainant failed to establish common law service mark rights in her personal name and therefore denied the Complaint.

New Generic Top Level Domain Extensions

There are currently 21 generic top-level domain extensions ("gTLDs") (such as, .com, .net, .info, etc.). However, with over a billion current Internet users and an ever-increasing demand for websites, there exists a need for more domain names.  To address this, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has recently developed guidelines and procedures to allow companies to register new gTLDs.  Under this new program, any applicant can establish a new gTLD of any string up to 64 letters, consisting of anything from an abbreviation, to a trademark, or personal name.  ICANN is still soliciting public comment and objections in anticipation of developing an implementation plan for this new program.  So, applications are unlikely not open until the middle of 2009 at the earliest. 

Participation in the new gTLD process is not for everyone, however, as the costs of establishing and maintaining a new gTLD will likely be quite costly.  Registration of new gTLDs will consist of very high start up and participation expenses of approximately $500,000 in the first year alone, including an application evaluation fee of $185,000, a $75,000 ICANN annual fee and various other costs such as the cost of legal representation, fees to registry providers, and compliance and insurance costs.

The new program does have its advantages, as it will allow trademark owners and companies who use it to their advantage to more efficiently brand their products and open up an unlimited amount of new domain names for users.  However, the program will also be a cause for concern to many trademark owners who now must be extra cautious and vigilant in protecting their marks due to the possibility that third parties may seek to register other companies’ trademarks as gTLD domains.  In turn, however, similar to the domain name dispute process already in use, WIPO will administer a process for objecting to new gTLDs available to trademark owners who believe their rights are being infringed upon.