In the recent decision of Digital Playground, Inc. v. Network Telephone Services, Inc., Dan Coleman, Frontier Credit Corp., and Harriet Walkup (WIPO Case No. D2009-0105, March 20, 2009), a single member panel was faced with a dispute over the domain www.virtualsex.com. Complainant, Digital Playground, maintains a website at www.digitalplayground.com and claims to be a leading producer of adult films with a 40% market share of adult DVD’s. Digital Playground owns a trademark for the mark VIRTUAL SEX, (Reg. No. 3014320) based on a first use date in 1994. Respondent registered the domain on August 24, 1995 and “set up a web site at which adult content DVDs, strip clubs webcam sites, sex chat rooms, adult dating services, and ‘adult toys’ were offered for sale.” Respondent claimed to have no knowledge of Complainant or its mark at the time of the domain registration and argued that the term is generic. [Editor’s note: a “generic” term is one that answers the question “What is it?”]
The Panel reviewed the UDRP policies established by ICANN whereby “Paragraph 4(a) of the Policy directs that the complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) that the domain name has been registered and is being used in bad faith.”
In addressing these elements, the Panel did not provide significant analysis and cited to only one prior domain dispute decision. Regardless, the Panel made the following findings. First, regarding whether the domain was identical or confusingly similar, the Panel explained that although Respondent conceded that the domain was confusingly similar, Respondent did not rebut the presumption that the mark was distinctive. As a result, the Panel found that Complainant satisfied this element.
The Panel next explained that the second element, whether the Respondent had any rights or legitimate interests in the mark, would really depend on an analysis of the third prong, bad faith. So the Panel addressed the bad faith portion of the elements, noting that Complainant claimed to have coined the term VIRTUAL SEX in 1994 and that by August of 1995 it had acquired secondary meaning. The Panel observed as follows:
However, Complainant produces no evidence of the acquisition of secondary meaning by August 1995. Moreover, the fact that Complainant did not bring this action until 14 years after Respondent had registered the domain name at issue and more than 13 years after Respondent had used the domain name at issue to resolve to a web site at which products competitive to those offered by Complainant, as well as products entirely different from those offered by Complainant, is not explained by Complainant. Finally the diverse offerings available on the web site to which the domain name at issue resolves suggest that Respondent is trading on the descriptiveness of the term “virtual sex,” rather than on the goodwill attached to Complainant’s mark.
Ultimately the Panel found that Complainant had failed to establish bad faith and DENIED Digital Playground’s request for transfer.