Domain Name Wire

Domain Name Wire

  • UDRP: Girls Do Porn, but company Doesn’t Do Trademarks well

    1. BY - Aug 27, 2014
    2. Policy & Law
    3. 7 Comments

    Company runs site that is rather descriptive of its services.

    BLL Media Holdings has lost a UDRP it filed against Infinitoria Ltd over the domain name GirlDoPorn.com (in which “girl” in singular).

    The complainant purports to run the site GirlsDoPorn.com (in which “girls” is plural).

    BLL failed to show the World Intellectual Property Organization panelist that the domain name was confusingly similar to a mark in which it had rights.

    The domain name GirlsDoPorn.com was originally registered in the name of another company. The complainant tried to explain this discrepancy in a supplemental filing, stating that it was registered by a predecessor entity. But it didn’t provide any evidence of this.

    Another problem for the complainant was that the U.S. Patent and Trademark Office refused its trademark application for the phrase on the basis that it describes a feature of the Complainant’s services. (Think about it for a moment.)

    John Berryhill represented the domain name owner.

    UDRP decision

7 Comments
  • “U.S. Patent and Trademark Office refused its trademark application for the phrase”

    uspto.gov shows the TM is live with registration date of April 8, 2014.

  • As a person who “on and off” follows DRP cases, does John Berryhill ever lose? I question whether the panelists even read the case when they see JB representing the respondent.

    • It has happened. Just very rare.

    • John Berryhill says:

      August 28, 2014 at 10:30 pm

      It all depends on the facts of the case. The point is to make sure that both sides have an opportunity to adequately explain why the facts and the relevant principles should result in a decision one way or the other. Quite often the complaint does a very poor job of that because they either don’t expect a response or because they really don’t understand basic trademark law or the narrow class of situations the UDRP was designed to address. Once in a while the facts define a situation where the outcome might go either way depending on how a panel interprets and applies the UDRP, and reasonable minds can differ on what the outcome should be. In those situations the outcome is secondary to getting a read on how the UDRP might be applied in future similar circumstances.

      Most of the time, it is the complainant’s representative’s first rodeo, or at least the first time they didn’t have a default case. Across the board, complaints win 80% of the time, and usually by default. Ideally, that would be 100%, if the UDRP was only used in appropriate circumstances. What experienced attorneys like Ari Goldberger, Zak Muscovitch, Brett Lewis, Enrico Shaeffer, Paul Keating, and others I apologize for not mentioning offhand have learned over time is how to spot complainant arguments that simply don’t work or don’t apply to the facts at hand, and to point that out to a panel in an understandable way. Nobody always wins, and I’ve had plenty of those learning opportunities.

      It’s sort of like asking whether an emergency room saves every patient – it all depends on what condition any individual patient may happen to have on the way in. I often discourage domain registrants from wasting money on slim chances, and I think a lot of these cases would come out just fine with no defense at all. The problem is that in trying to “simplify” their presentation, some complaints can be exaggerated or misleading in ways that need to be called out. There’s no magic to that.

Leave a Reply