Digital Playground Loses Domain Claim

LOS ANGELES -- Network Telephone Services has won a battle over the rights to the domain 

Tuesday, Wired revealed the World Intellectual Property Organization ruled in favor of the company over Digital Playground, despite its claim of coming up with the term "Virtual Sex" 15 years ago.

The WIPO ruling of arbitration and mediation finds Digital Playground had disputed ownership of the domain, which is registered with eNom, Inc. The company first applied to trademark "Virtual Sex" in 2000 and a trademark was issued in 2005. The term was first used in commerce in 1994, according to the complaint.

Network Telephone registered as a domain in 1995 and followed with a website that has now existed for more than 13 years, offering adult DVDs, strip clubs webcam sites, sex chat rooms, adult dating, adult toys and other products and services.

In November 2008, Digital Playground sent a cease-and-desist and Network Telephone responded to the company's lawyers, disputing a claim that the domain name is confusing or similar to the trademark.

The arbitration, first requested this January, was overseen solely by M. Scott Donahey, appointed to the panel on March 9. In the ruling dated March 20, Donahey wrote, "The diverse offerings available on the website to which the domain name at issue resolves suggest that respondent is trading on the descriptiveness of the term 'virtual sex.'"

"Respondent submitted a declaration that it had not heard of complainant when it registered the domain name at issue and that it understood that "virtual sex" was a descriptive and generic term," the ruling said. "Complainant asserted in its complaint that it had coined the term in 1994 and that by August 1995 complainant had acquired secondary meaning in the mark 'Virtual Sex.'"

But Donahey found no evidence of the acquisition of secondary meaning by August 1995 and also questioned why the current actions were not brought until 14 years after Network Telephone has registered the domain name and run a site for 13 years, featuring "products competitive to those offered by complainant, as well as products entirely different from those offered by complainant," which he said went unexplained by Digital Playground.

"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," the panel ruling said, finding that Digital Playground "failed to establish that the domain name at issue was registered and is being used in bad faith.

Donahey cited the findings in 2001's 402 Shoes, Inc. dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223, to support his ruling.

Neither Network Telephone nor Digital Playground could be reached for comment at the time this story was written.