Owner of VirtualSex.com defends domain name in arbitration.
An arbitrator with World Intellectual Property Organization has ruled that the owners of VirtualSex.com can keep their domain name.
A challenge was mounted by Digital Playground, Inc, an adult movie producer. Digital Playground has a hard-fought trademark on the term “Virtual Sex”, and claimed first use in commerce back in 1994. The respondent registered the domain name in 1995 and said it had not heard of Digital Playground’s trademark at the time, concluding it was a generic term.
Digital Playground failed to prove that the domain name was registered and used in bad faith. Among other things, it didn’t help that the company took 14 years before filing for arbitration. Here’s what the panel wrote about the not-so secondary meaning of the term Virtual Sex and the delay:
However, Complainant produces no evidence of the acquisition of secondary meaning by August 1995. Moreover, 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.
Finally 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,â€ rather than on the goodwill attached to Complainant’s mark.
As any good journalist would do, I conducted full and complete research of VirtualSex.com’s content prior to writing this story. Results from Archive.org and DomainTools show the domain resolving to variety of landing pages until late 2004. Since then it has resolved on a parked page.