Jun 20, 2013 2:15 PM PDT    Text size: 

MONTREAL — The 13 adult tube sites ordered transferred to the operator of PornTube.com wasn't the first win for Tenza Trading Ltd. over sites that use "porn" and "tube" in succession in their domain names.

PornTube.com's operator, Cyprus-based owner Tenza Trading, took over PornTube.net from its operator in mid April after winning an arbitration case in January. 

In that case, PornTube.net's operator never responded to the National Arbitration Forum and arbitrator Houston Putnam Lowry ruled the case a default. PornTube.net's operator was listed as "Domain Manager" in the case.

The PornTube.net domain name was bought up in 2008, according to records introduced in the case. Through its four years, the site offered redirections to sites like XTube.com, PornCity.com, FreeTube.com and PornoTube.com.

But once Tenza Trading contacted PornTube.net's operator over cybersquatting allegations, the website became disabled.

Tenza Trading — the current operator of PornTube.com 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.

Tenza Trading argued in the PornTube.net case that a comparison of the domain name and registered trademark illustrates the domain name is identical to its PornTube registered trademark.

Tenza Trading noted, however, that PornTube.net was in operation before it received trademarks.

"[Tenza Trading] contends even though the PornTube.net domain name has been used prior to the registration of the PornTube mark, [Tenza Trading]  has common law rights dating back to 2005," the arbitrator wrote. "[Tenza Trading] argues it was assigned rights in the PornTube mark in 2011, but prior to this the mark had been used in the sale of adult oriented goods and services since 2005."

The win at the National Arbitration Forum in January spurred another cybersquatting case that could turn into a larger legal battle.

Last month, Calista Enterprises was ordered to transfer 13 domain names to Tenza Trading because the sites  also use "porn" and "tube" in their domain names.

The ruling was made by arbitrators 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 in that case 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.

Seychelles-based Calista can appeal the National Arbitration Forum's decision over the 13 domain names no later than Tuesday, a source close to the case told XBIZ.