X-art.com Can't Take Over FreeX-art.com, Arbitrator Rules

TRAVERSE CITY, Mich. — An arbitrator last week denied a request by the operator of X-art.com to take over the domain name FreeX-art.com in a cybersquatting case filed at the National Arbitration Forum.

X-art.com, which offers softcore fare, is known as one of the most prolific litigants in the online adult space with its filing of more than 3,200 porn piracy cases through its parent company Malibu Media.

The company filed the cybersquatting case against FreeX-art's operator, Popescu Ion of Romania, who offered "copies of complainant’s X-art material to Internet users free of charge," according to the complaint.

Ion, who registered the site in April 2011, did not respond to the UDRP action.

FreeX-art.com hasn't resolved for months; however the site, according to archive records, was home to similar adult entertainment fare from 2011 through most of 2014.

In the dispute, X-art.com alleged that FreeX-art.com's operator registered the domain in bad faith, doesn't have any legitimate interests in the domain name and that the domain is confusingly similar to its X-art trademark.

But what seemed to be an open-and-shut case for X-art unraveled before the company at the National Arbitration Forum.

The arbitrator ruled that X-art, despite having a registered trademark for adult brands in the U.S., couldn't prove the extent of its use of its trademark prior to 2011 when it filed papers for it.

X-art's operator registered the site in 2007 and began operating it in 2009, according to the complaint.

"The panel concludes that complainant has not established rights in the X-art mark at the relevant time, namely April 2011, and therefore has not satisfied policy," the arbitrator ruled.

"Complainant states that it 'has spent substantial time, effort, and money advertising and promoting the trademarks'  but neglects to specify how much time, effort and money was spent and during what period of time," the arbitrator said. "Therefore, it is impossible to determine if respondent knew of complainant’s mark at the time of registration of the disputed domain name." 

The arbitrator noted that since X-art failed to establish the first of the three required elements under the UDRP, it declined to analyze the other two elements of the policy relative to respondent’s rights or legitimate interests or its registration and use in bad faith.

"It is ordered that the FreeX-art.com domain name remain with respondent," the arbitrator said.

X-art.com was represented by attorney M. Keith Lipscomb, who has worked on scores of piracy cases for the company.

Adult industry attorney, Marc Randazza, who leads the Randazza Legal Group of Las Vegas, upon comment, told XBIZ that the case should have been a slam dunk for X-art. Randazza was not a party to the action.

"Wow... I won't say that I never lost an undefended one, but this should have been a no-brainer," Randazza said.  

"Here's the problem: A lot of lawyers think that these are easy," Randazza said. "They can be, but you gotta know how the process works, and it really helps to have civil law training as well as common law — since you never know if you're going to get a civil arbitrator or a common law one. 

"If you don't essentially write your complaint to address both systems, that's how you can lose an easy one like this," Randazza said.

"Another mistake X-Art made? They used the National Arbitration Forum. The procedures at NAF are terrible, and they delegate way too much authority to flunkies before the decision-making gets to the arbitrator. I would definitely use WIPO over NAF."