The National Arbitration Forum (NAF) ruled July 13 that NextDoorCash gets to keep the rights to HotMomNextDoor.com, after a challenge from La Touraine Inc., the parent company of Naughty America.
La Touraine filed the complaint on May 18 under ICANN’s Uniform Domain Name Dispute Resolution Policy, contending that HotMomNextDoor.com is not substantially different from their domain, MyFriendsHotMom.com, and therefore is confusing to the surfer and has cost the company business.
The NAF rejected La Touraine’s claims, ruling the domain names were not confusing.
NextDoorCash owner Andrej Gajdar was surprised by the actions, but not by the outcome.
“Of course I was [surprised], even more so because I made them $40,000 in the past as their affiliate. How should I feel?” he says.
After some Naughty America affiliates complained that the sites were too similar, La Touraine took action. Initially, the company asked Gajdar to change the domain name and alter the design of his site. La Touraine’s president purchased several domains and offered them to Gajdar as substitutes. When Gajdar refused the offer, La Touraine’s lawyer, Paul Cambria, told him to transfer the domain because La Touraine owned the trademark, Gajdar says.
“The site’s entire design and color were the same, and we wanted to make a point that we treat our site brands very seriously. That’s why our resellers send us traffic,” says Mark B, Naughty America’s marketing director. “They know we do a great job at keeping our members recurring with our content and ideas and the image of our company. To keep our resellers happy and preserve our brand, we had to act on it.”
MyFriendsHotMom.com was registered on December 5, 2003, and HotMomNextDoor.com was registered on January 22, 2004. La Touraine filed the trademark registration application on March 30, 2005.
“I hired a lawyer, and he told me the case was stupid and they couldn’t win,” Gajdar says.
“I won. Case closed.”
As of now, La Touraine has no further actions planned, and the company doesn’t regret its decision to pursue HotMomNextDoor.com.
“We’re responsible to make sure our resellers are happy and our customers stay, and that’s what we were fighting for,” Mark B says. “It didn’t go in our favor, but if we had a chance to do it again, we would do the same thing.”
