February 2, 2018 at 10:21 pm #29261
Feb 1, 2018 11:42 AM PST
MELBOURNE — An arbitrator recently ordered the transfer of a pair of domain names — LittleCaprice.com and LittleCaprice.net — to adult model Little Caprice, who contended in her claim that the operators of the sites had been infringing on her trademark.
The claim, however, was much more complex than garden-variety cybersquatting cases — while Little Caprice has held a trademark for her stage name for just one year, the website operators who started marketing LittleCaprice.com and LittleCaprice.net began marketing the sites about 10 years ago. And, they claimed to have a 100-year license to publish her content.
According to the recent WIPO decision, the respondents in the case, Dmitriy Pyatnitca and Dmytro Pyatnytsya of ZiboSoftware SRO in Prague, registered the pair of domains in 2008, long before Little Caprice registered her European trademark for the name but only shortly after she started using the stage name.
The decision, rendered by arbitrator Warwick Rothnie, noted that the respondents “registered the disputed domain names to take advantage of her association with the name Little Caprice” and created “unauthorized” sites.
“Apparently, [her] stage name was coined by Alexandr Semenenko, a photographer,” according to the decision. “In 2008 and 2009, [she] granted Semenenko several licenses [under a model release contract,] which included the following terms — ‘the irrevocable and unrestricted right and permission to copyright, in his own name or otherwise, and use, re-use and/or publish photographic pictures of [her] … in conjunction with [her] own name or a fictitious name …. I also consent to the use of any printed matter or text in conjunction therewith … or to which it may apply or be applied .…’”
Several years later, “Semenenko’s company granted the respondent a license to use 57 hardcore sets and 40 solo sets of [Little Caprice],” the decision said. “The license is for 100 years. It also gives the respondent the right to use the resulting product for web publication, DVD and TV and on an unlimited number of domains.”
“For good measure, the licenses also included what purport to be waivers of [her] moral rights,” said the decision, which noted that it didn’t appear from the license that it conferred on the respondents’ rights to register “Little Caprice” as a domain name.
The first of the model releases included in evidence is dated June 14, 2008; “that is, almost one month before the disputed domain names were registered,” the decision said.
In his decision, arbitrator Rothnie ruled for the adult model, ruling that the LittleCaprice.com and LittleCaprice.net domain names were confusingly similar to her trademark, that the domain holders did not have any rights to the domains, and that the domain names were registered in bad faith.
Rothnie ordered the domain names LittleCaprice.com and LittleCaprice.net transferred to Little Caprice.
Little Caprice was unavailable at post time; however, adult industry attorney Michael Fattorosi, who represented her, told XBIZ that one month after the decision in late December the domains were finally transferred to her control.
Fattorosi noted that it’s usually larger, deep-pocketed companies in adult entertainment that file cybersquatting claims.
“It’s unusual that a performer will fight for her domain rights, especially after such a long period of time,” he said.
Michael W. Fattorosi
Don’t Miss a Beat
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