The disputed URL, BongaCams.eu, was operated by a former affiliate who used the familiar “BongaCams” signage on the site to help earn revenue.
“The case posed some significant questions — the main one being, whether the respondent, as a past affiliate, had a right to maintain ownership of a domain name containing a rights holders’ trademark,” said Adan McManus, brand protection manager for trademark enforcement firm Safenames Ltd., which represented BongaCams.com’s parent company in the case.
The parent, Cyprus-based Beronata Services Ltd., received an E.U. registration for its “BongaCams” trademark in 2013.
According to the complaint, Beronata put an end to its affiliate agreement with the domain holder and respondent in the claim, Andre Pasenih, once it found out about his site, BongaCams.eu, which was registered in 2012.
In late July, a dispute-resolution judge deciding the case at the Arbitration Center for .EU Disputes ruled that the BongaCams.eu domain name was confusingly similar to Beronata’s trademark, that Pasenih had no rights or legitimate interests in respect of the disputed domain name and that the domain name was registered and being used in bad faith.
The arbitrator ordered the domain name transferred to BongaCams.com’s parent company.
Safenames’ McManus said the country code top-level domain now redirects to the official BongaCams platform.
“We are very happy to have assisted BongaCams with the retrieval of such an important domain name,” McManus said. “We hope this sends the message that even if an affiliate relationship has broken down between two parties, it does not give an ex-affiliate the right to continue using these protected words or phrases in domain names.
“The right to hold a trademark in and to a particular term, phrase or logo is still a respected right, which exclusively benefits brand owners’ unless agreed otherwise," he said. "If anyone is seen to breach these rights, ramifications should not come as a shock, as clearly illustrated in this case.”