SAN FRANCISCO—A federal district court for the Northern District of California ruled in favor of Aylo, the parent company of Pornhub.com, in a cybersquatting lawsuit that was filed against a domain registry company called Tonic. By order of the court on March 21, Tonic must transfer over the domain names that infringe on Aylo trademarks.
Cybersquatting is the practice of registering a domain name and parking it while not using it. This is typically done to profit from a trademark, corporate name, or personal name registered and protected under copyright and intellectual property laws.
Licensing IP International, a subsidiary of the Montreal-based Aylo Holdings that owns Aylo’s high-value trademarks and IP, filed a cybersquatting lawsuit to take out pirated domains infringing on trademarks owned by the adult entertainment giant. This is an in rem approach, meaning that Licensing IP went after a property and not an individual.
In February of this year, a federal magistrate judge issued a report recommending that the domain registrar transfer the domains to Licensing IP. No personal jurisdiction over the foreign registrants needed to be established, due to the in rem complaint targeting the actual property of the domains.
Citing this, U.S. District Judge Jon S. Tigar ordered the direct transfer of domains including “mydirtyhobby.to,” “mdh.to” and “watchmdh.to.” The court found that Tonic, which is based in San Francisco, infringed on Aylo’s intellectual property rights for MyDirtyHobby.com. MyDirtyHobby is owned and operated by Aylo subsidiaries. Tigar additionally ordered the “Disputed Domain Names” to transfer other sites like “watchdirty.to” and more ending with a “.to” top-level domain that are registered through Tonic.
Torrent Freak reports that the cybersquatting legal strategy used by Aylo’s companies here is rare in federal courts due to this matter typically being resolved by the Internet Corporation for Assigned Names and Numbers (ICANN) and its Uniform Domain-Name Dispute-Resolution Policy proceedings. Licensing IP took Tonic to federal court.
Tonic is a trade name for the Tonga Network Information Center, which claims to be the national domain registration authority for the small island Kingdom of Tonga.
