PORTLAND, Ore. — PornTube.com's parent operator, Cyprus-based Tenza Trading, has been awarded $4.5 million in damages in a trademark infringement and unfair competition suit against Calista Enterprises Ltd. and its operator, Alexander Zhukov.
The award, reached in a consent judgment last month, ends a long-running dispute between the companies over domain names that include the words “porn” and “tube.”
The judgment also includes an order for the transfer of 14 adult websites and a permanent injunction against Seychelles-based Calista Enterprises.
Details of the consent agreement, including the calculation of the award, currently are under seal.
At center of the lawsuit, filed at federal court in Portland, are 14 adult tube site domains that used "porn" and "tube" in their domain names: LargePornTube.com, GoldPornTube.com, KissPornTube.com, BoxPornTube.com, PipePornTube.com, 69PornTube.com, RoyalPornTube.com, BookPornTube.com, CubePornTube.com, FreshPornTube.com, LustPornTube.com, BonusPornTube.com, DirectPornTube.com and GoldPornTube.xxx.
Each of the domains cybersquatted on the PornTube.com trademark, Tenza Trading attorneys argued in the case.
Tenza Trading, which acquired the website in February 2011 from EMC Ideas Inc., holds three international trademark registrations for the “PornTube” mark, including U.S. Patent and Trademark No. 3,936,197.
The dispute between the two companies has gone on for years, first at the National Arbitration Forum, which sided for Tenza Trading in two separate cybersquatting cases — one involving PornTube.net and another that involved 13 of the 14 sites involved in the current consent judgment. In both cases arbitrators ruled for Tenza.
Calista, however, filed a petition to have the "PornTube" trademark registration cancelled in the U.S. because use of the term is purportedly commonplace. But the company was unsuccessful with the challenge.
“Calista has infringed Tenza’s common law and statutory rights in the trademark by using the ‘PornTube’ mark in the names of the infringing domains and in material contained on the websites at those domains, including material displayed to Internet visitors to said websites and in meta-tags and other non-displayed materials that are utilized by Internet search engines such as Google, Yahoo and Bing,” according to the consent judgment signed off by U.S. District Judge Michael Simon last month.
The $4.5 million judgment against Calista includes a waiver between the parties to appeal it a later date, as well as a permanent restraining enjoining Calista from using the “PornTube” trademark within its properties.
With the consent judgment, the parties’ case at the U.S. Trademark Trial and Appeal Board over the sites was withdrawn.
Industry attorneys Anna Vradenburgh, who represented Tenza Trading, and Val Gurvitz, who was counsel for Calista Enterprises, both did not respond to XBIZ queries on Tuesday evening.
