NEWTON CENTRE, Mass. — An arbitration panel, 2-1, recently denied cybersquatting claims against the operator of two domains that incorporate “porntube” within its website names.
The decision made by ADR Forum neutrals is significant because Tenza Trading Ltd., which operates PornTube.com among many other web properties, owns a U.S. trademark for the mark “porntube” for adult entertainment services and has used it commercially since 2005.
The cybersquatting claims made by Tenza had targeted the domains of the web properties PornTubeGals.com, an operating adult tube site, and PornTubeMovs.com, which currently doesn’t resolve.
Both of the sites are registered to respondent Maksim Lazynin, who through his counsel argued that the domains shouldn’t be transferred because the “porntube” mark is generic and that they weren’t registered in bad faith.
While the arbitration panel in its decision agreed that the domains PornTubeGals.com and PornTubeMovs.com were confusingly similar to the PornTube.com name and that Lazynin had no right or legitimate interest in respect to the domains, it did not rule that the registration and use was made in bad faith.
“Bad faith has a subjective component. Even though respondent has not established the mark’s genericness, that does not necessarily mean that respondent lacked a good-faith belief in the mark’s genericness at the times either of registration or of use or both,” the panel wrote.
In its decision, arbitrators pointed to submissions by Lazynin that contended that he was unaware that Tenza held a bonafide trademark for “porntube” during the time of registration, which coincided during a period that Tenza was challenged over the genericness of the mark in another case involving Calista Enterprises Ltd.
Lazynin had argued that summary judgment proceedings in the Calista case involving “porntube” were non-final at the time of registrations.
The arbitration panel agreed with Lazynin, ruling that Tenza had not proved bad-faith registration and use with the 2014 registrations of the domains PornTubeGals.com and PornTubeMovs.com.
“While we have concluded that respondent has failed to establish genericness, we now further conclude that, nonetheless, complainant has failed to establish to our satisfaction that respondent did not have a good-faith belief in the genericness of the mark in question,” the panel wrote.
Attorney Marc Randazza of Randazza Legal Group, who assisted attorney Val Gurvits of Boston Law Group, the lawyer of record representing Lazynin, said that the conflict between the two enterprises resulted in a “very important case.”
“I think that the claim that ‘porntube’ being a unique source identifier is absurd,” Randazza told XBIZ. “Mr. Gurvits did a great job on this case, protecting free expression in the process.
“When one company tries to monopolize a generic term, it impoverishes the marketplace of ideas in an effort to unjustly stop others from truthfully describing their goods or services,” Randazza said. “While some cases like this are close calls, this one is quite clear.”
Attorney Anna Vradenburgh, who represents Tenza, did not immediately respond for XBIZ comment.
