MONTREAL — Thirteen adult tube sites operated by Calista Enterprises have been ordered transferred to Tenza Trading Ltd., the Cyprus-based owner of PornTube.com.
The ruling was made by arbitrators last month despite a pending Calista's legal petition to have the "PornTube" trademark registration cancelled in the U.S. because use of the term is purportedly commonplace.
The websites ordered transferred include LargePornTube.com, GoldPornTube.com, KissPornTube.com, BoxPornTube.com, PipePornTube.com, 69PornTube.com, RoyalPornTube.com, BookPornTube.com, CubePornTube.com, FreshPornTube.com, LustPornTube.com, BonusPornTube.com and DirectPornTube.com.
Panelists of the National Arbitration Forum ruled 2-1 in favor of PornTube, which maintains about 1.8 million unique visitors per day and pays out affiliate webmasters about $80,000 per month, according to records entered into the case.
The majority of the panel said in the ruling that Seychelles-based Calista registered the disputed domain names in bad faith and had actual knowledge of the PornTube operators rights in the mark despite the undisputed fact that Calista used the 13 sites to drive traffic to PornTube.
PornTube operators, as a result, paid to Calista "in excess of $132,140 over a period of 20 months for its services through the affiliate program," according to records.
"[Calista] was responsible for more than eight percent of the traffic visiting [PornTube’s] website through the affiliate program," arbitrators said. "The respondent states that this constitutes a bona fide offering of services."
But panelists said that just because Calista was an affiliate, that fact is irrelevant to the case at hand. The key to the ruling, arbitrators said, were PornTube operators' trademarks.
Tenza Trading — the current operator of PornTube that acquired the website in February 2011 from EMC Ideas Inc. — holds three trademark registrations for the PornTube mark: United States Patent and Trademark Office Registration No. 3,936,197; Canadian Intellectual Property Office Registration No. TMA779,803; and, European Union Office for Harmonization in the Internal Market No. 8,725,401.
The majority of arbitrators said in the opinion that PornTube's parent company has valid trademarks for the domain name and that that should be sufficient to demonstrate its rights under UDRP, formally known as Uniform Dispute Resolution Policy.
"While acknowledging the respondent’s petition for cancellation of the U.S. registration, the majority of the panel notes that the U.S. registration is on the principal register; this is at the least an indication that the USPTO, at the time of registration, did not consider the PornTube mark to be descriptive," the ruling said. "Moreover, the trademark registrations in Canada and Europe, where similar legislation with regard to descriptiveness exists, are deemed valid.
"Even if the U.S. petition for cancellation was to be successful, this would not affect the validity of the Canadian and community registrations. Furthermore, that petition does not dismiss the complainant’s established common law rights in the PornTube mark, acquired through use since at least 2005."
In Calista's petition for cancellation before the U.S. Patent and Trademark Office, the company said that the terms "porn tube" and "porntube" is commonplace, particularly in technology and financial journalism and courts worldwide.
"The degree to which use of this term has become commonplace is indicated by the fact that a search for the phrase 'porn tube' on the Google search engine turns up approximately 129 million results," Calista's counsel said.
The Patent Office's Trademark Trial and Appeal Board has yet to render a decision in the petition for cancellation.
A lawyer for PornTube declined comment, while Calista attorneys did not immediately respond for comment.