San Diego-based BLL Media Holdings, operator of GirlsDoPorn.com, a subscription-based adult content website, claimed that the operator of GirlDoPorn.com, Infinitoria Ltd. of London, registered the site in bad faith because the site dropped the "s" in its domain name and now shows adult tube-site content and related advertising.
GirlsDoPorn.com several years ago received instant publicity after the site included a sex video of Melissa King, the former Miss Delaware Teen USA. After found out, King, who performed oral and vaginal sex and ended up with a facial in the video, gave up her crown. But her notoriety continued and the site gained a following.
In the case, BLL Media said that the GirlsDoPorn.com membership site was registered in 2006, launched in 2007 and that its case was clear — that its domain name was senior in its launch to Infinitorial's website, GirlDoPorn.com, which debuted in 2009.
BLL Media also claimed in its complaint that it had acquired rights in the GirlsDoPorn.com trademark as a consequence of use that it has made of the trademark through advertising and videos that feature the trademark.
But the arbitrator in the case said that a U.S. trademark was refused because the name "GirlsDoPorn" was "descriptive."
The U.S. Patent and Trademark Office, in an April decision, said that “when considered in relation to the identified services, the proposed mark immediately described a feature of the services” and “therefore the plain meaning of GirlsDoPorn.com immediately tells the customer that the services are about or are related to services at a commercial website at which girls do porn.”
The arbitrator also noted in the ruling that BLL Media incorporated its company in 2013, and, as a result, cannot claim to own a reputation in the trademark GirlsDoPorn.com as of 2007.
"A mere allegation of common law rights does not suffice," the arbitrator wrote. "Where a trademark is descriptive, as is the case in this instance, the onus on a complainant to provide compelling evidence of distinctiveness is greater.
"Other than mere reference to its ownership of the domain name GirlsDoPorn.com since 2007, the complainant did not provide details of sale and advertising expenditure, or samples of its business advertisements, or media recognition, or any evidence of third-party use of the trade mark in respect of its predecessor’s or its own business.
"The fact that the complainant’s domain name GirlsDoPorn.com does not disclose its ownership but is protected under privacy service, also does not assist the complainant with its claim."
The arbitrator, as a result, denied BLL Media's complaint.