Cybernet Entertainment LLC, the operator of Kink.com, has secured a legal victory in an intellectual property dispute at the World Intellectual Property Organization (WIPO). The ruling mandates the transfer of the domain name "thebdsmkink.com" to Cybernet Entertainment.

WIPO Ruling Details

The decision was issued on October 5 by a single-person panel of the Arbitration and Mediation Center of WIPO. The panelist, Lawrence K. Nodine, found that the party referred to as "karsony karsony" infringed on protected marks in the United States and Europe that safeguard Kink.com.

Cybernet Entertainment, a U.S.-based firm, was represented by Greyhills Rechtsanwälte Partnerschaftsgesellschaft, a German boutique trademark law firm with offices in Berlin and Cologne. The complaint, filed in August by Cybernet Entertainment, accused the U.S.-based infringer, "karsony karsony," of violating international copyright and intellectual property conventions by owning the domain name "thebdsmkink.com."

The WIPO panel determined that the disputed website displayed copyrighted material copied from Kink.com’s official online presence. This included product imagery, product descriptions, product presentation, corporate-history information, and audiovisual materials. The impersonating site, registered in March, was found to be using a domain name "confusingly similar" to Kink.com. It also offered BDSM products comparable to those available on Kink sites under its trademark, displayed the Kink graphic logo, and duplicated the "About Us" section from Kink’s legitimate websites.

Based on these findings, Nodine awarded Kink control of the infringing domain name and other related assets. The ruling mandates the transfer of the domain thebdsmkink.com to Cybernet Entertainment.

Kink.com's History and Previous IP Challenges

Kink.com, an adult production company, was founded by Peter Acworth in the late 1990s. Cybernet Entertainment operates both Kink.com and Kinkstore.com.

This is not the first time Kink.com has been involved in intellectual property matters. In June 2007, Kink.com filed an appeal with the U.S. Patent and Trademark Office after being denied a brand for FuckingMachines.com. The denial was based on Section 2(a) of the federal trademark code, which deems certain marks "immoral" and "scandalous."

FuckingMachines.com, a site whose URL describes its content, launched in 2000. Peter Acworth first applied for a trademark with the government five years later. The patent office's trademark code deems "fuck" to be immoral and scandalous, leading to the denial of Acworth's request. The federal government defines what words are immoral and acceptable, with "immoral" and "scandalous" not explicitly defined by the code. The Orlando Weekly reported that 39 trademark petitions including the words "fuck" and "fucking" had been filed with the patent office, and none had been approved, while "bitch" and "ass" were allowed.

Michael Engel, the attorney who reviewed the FuckingMachines.com case for the government, stated that the word "fucking" is "an offensive and vulgar reference to the act of sex," and is a mark deemed scandalous, thus preventing its registration. Acworth's attorney, Marc Randazza, believed the rejection was unconstitutional, stating that "the trademark office has gone off the deep end" with such trademark refusals. Adult industry lawyer Robert Apgood agreed with Randazza, noting an excessive number of trademark requests rejected for containing "scandalous" material. Apgood commented that it was "unfortunate that the executive branch is now reaching deep into the machinations of government to further its 'legislation of morality' agenda."

WIPO's Role in Domain Disputes

The World Intellectual Property Organization (WIPO) provides alternative dispute resolution mechanisms for business-to-business digital copyright and content-related disputes. The WIPO Arbitration and Mediation Center handles complaints such as the one filed by Cybernet Entertainment. The recent ruling by the WIPO administrative panel underscores the organization's role in resolving domain name disputes where trademark infringement is alleged.

Key Facts

  • Cybernet Entertainment LLC, operator of Kink.com, won an intellectual property dispute at WIPO.
  • The ruling, issued on October 5, mandates the transfer of "thebdsmkink.com" to Cybernet Entertainment.
  • The WIPO panel found "karsony karsony" infringed on Kink.com's protected marks in the U.S. and Europe.
  • The infringing site duplicated Kink.com's content, including product imagery, descriptions, and audiovisual materials.
  • Kink.com was founded by Peter Acworth in the late 1990s.
  • Cybernet Entertainment was represented by Greyhills Rechtsanwälte Partnerschaftsgesellschaft.