WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Darkside Productions Inc & Group Kaitu, LLC v. Eros International Corporation

Case No. D2003-0065

 

1. The Parties

The Complainants are Darkside Productions, Inc. and Group Kaitu, LLC, of 315 Washington Street, Oakland, California, 94607, United States of America ("the Complainants").

The Respondent is Eros International Corporation (Asad Pourhamid), Av. Severo Ochoa No. 18, Edf. Embajada esc. 1-4b, Marbella (malaga) 29600, Spain ("the Respondent").

 

2. The Domain Names and Registrar

The disputed domain names:

<arizona-eros.com>
<atlanta-eros.com>
<austin-eros.com>
<boston-eros.com>
<britishcolumbiaeros.com>
<chicago-eros.com>
<eros-alberta.com>
<eros-britishcolumbia.com>
<eros-calgary.com>
<eros-california.com>
<eros-canadian.com>
<eros-manitoba.com>
<eros-ontario.com>
<eros-quebec.com>
<guide-eros.com>
<lasvegas-eros.com>
<london-eros.com>
<miami-eros.com>
<montreal-eros.com>
<paris-eros.com>
<toronto-eros.com>
<vancouver-eros.com> ("the Domain Names" are registered with Go Daddy Software).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2003. On January 30, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On the same day, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2003. The Response was filed with the Center on February 24, 2003.

The Center appointed Tony Willoughby as the sole Panelist in this matter on February 28, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On February 28, 2003, Counsel for the Complainants emailed WIPO to correct an aspect of the Response which the Complainants regarded as misleading. The issue in question has not affected the Panelís Decision and the Decision does not make reference to it.

 

4. Factual Background

The Complainants are two related entities based in Oakland, California, which between them own and use under licence the service mark EROS GUIDE, a service mark registered in the United States under number 2549369. The application for registration was filed on June 26, 2000, claiming a date of first use in commerce of August 1997.

The registration is for "dissemination of advertising for the goods and services of others via the global computer network."

The Respondent also claims rights to the mark EROS and has filed applications for registration of that mark for various services, most of them in the area of "adult-themed services."

The services provided by the Complainant are provided by way of websites at "www.eros-guide.com" and "www.erosguide.com" and a variety of other websites with addresses featuring domain names comprising the mark EROS followed by the name of a city or country. Sometimes the domain names are hyphenated and sometimes they are not. Examples are "www.erosphoenix.com" and "www.eroscanada.com." There are thirty or more such sites operated by the Complainant.

The Respondent, Eros International Corporation, has an address in Spain.

The Domain Names were registered in December 2002, to a Mr. Tyrcha. Shortly thereafter the Complainants became aware of the Domain Names and sent a cease and desist letter to Mr. Tyrcha. Mr. Tyrcha responded, denying bad faith, but offering to transfer the <guide-eros.com> domain name to the Complainants in return for the Respondentís costs.

On January 22, 2003, the Complainants responded clarifying their rights and reiterating their demands.

On January 28, 2003, the Complainants checked the Registrarís Whois database and found that the Domain Names had been registered to the Respondent. That same day Mr. Tyrchaís Counsel repeated the offer to transfer the <guide-eros.com> domain name to the Complainants. Mr. Tyrchaís Counsel also confirmed that all of the Domain Names had been transferred to the Respondent.

The domain name <guide-eros.com> is connected to a website at "www.guide-eros.com", the homepage of which reads as follows:

"Escorts Online

This is a directory of different service providers and escort related subject. <guide-eros.com> is a part of Escorts Online network of websites. This site do not contain explicit sexual acts or excessive nudity, but the links are of a sexual nature and are not suitable for viewing by children.

If you are not an adult (at least 18), or if you do not want to see sexually oriented materials, please leave now. If you are an adult, and wish to view the listings on this site, you are welcome. We do not have any connection or involvement either financial or any other kind to the service providers or companies that are listed on our site.

The information in this site is presented solely for informational and amusement purposes. This is not a solicitation or advertisement and it should not be considered to be an endorsement of any kind. You can visit Gentlemenís World website to view our worldwide escort directory and enjoy all other services such as interesting articles, discussion boards, interesting links, finance and free galleries."

At the bottom of the home page is a copyright notice reading "© 2002-2003 copyright Escorts Online, a non-commercial network."

 

5. Partiesí Contentions

A. Complainants

The Complainants contend that the Domain Names are all confusingly similar to the Complainantsí service mark EROS GUIDE and that the Domain Names all feature its mark EROS in which it claims unregistered rights and that the Domain Names are all confusingly similar to the Domain Names through which the Complainants provide their services, the bulk of them being combinations of the mark EROS and the name of a city or country.

The Complainants contend that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainants contend that the transfer to the Respondent by the original Registrant was not a bona fide transfer. The Complainants state that they have not granted the Respondent any rights to use any of the names or any derivatives of those names.

The Complainants contend that the Respondent is not generally known by way of the Domain Names and that its registration of the Domain Names was opportunistic and not in connection with any bona fide offering of goods or services. The Complainants further contend that the Respondent is using the Domain Names with intent to divert Internet users to the Respondentís competing websites.

The Complainants contend that the Domain Names were registered in bad faith and are being used in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. They claim that the transfer of the Domain Names to the Respondent was not a bona fide transfer and that it was intended to make life difficult for the Complainants, who were at that time in correspondence with the original registrant, Mr. Tyrcha. They point out that following the transfer of the Domain Names, Mr. Tyrchaís Counsel was still offering one of the Domain Names to the Complainants. The Complainants assert that the Respondent is connected with the original registrant.

The Complainants say that the Respondentís acquisition/use of the Domain Names was with intent to disrupt the Complainantsí business and to divert internet users riding on the back of the Complainantsí fame and goodwill associated with its service marks and domain names.

B. Respondent

The Respondent denies that the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights and asserts that the Complainantsí statements in relation to their rights are false and misleading. The Respondent points to the fact that the applications for EROS have not proceeded to registration and assert that those applications do not give the Complainants any rights at all.

The Respondent acknowledges that the Complainants have registered rights to the service mark EROS GUIDE but point to the fact that the specification of goods makes no mention of adult sites or escorts. The Respondent asserts that the reason for this is that the word EROS is unregistrable in relation to such services, it being "a generic name for escort services around the world."

The Respondent asserts that a proper specification of services for the Complainantsí service mark should read "dissemination of advertising for the goods and services of prostitutes via the global computer network." The Respondent observes that prostitution is illegal in most states of the United States. The Respondent says that "the Complainants will be guilty of conspiracy to commit prostitution and possibly could even be charged under RICO Act of Criminal Enterprise."

The Respondent then goes on to point out that there is no distinction between escorts and prostitutes, the upshot being that the Complainants can have no trade mark or service mark rights in respect of a generic and commonly descriptive word.

The Respondent then asserts that it has rights or legitimate interests in respect of the Domain Names. It dismisses the Complainantsí assertion that it has never granted the Respondent any rights, repeating that the Complainants do not have any rights to grant. It says that the Complainants have no legitimate rights to the word EROS and that everyone has rights to use the word EROS or derivatives of that word in a domain name.

The Respondent points out that its company name is Eros International Corporation and that the Domain Names are variants of that name, with the addition of a geographic indicator.

The Respondent concludes this section of the Response in the following terms:

"It is Respondentís intention to establish popular websites that will help Respondents study the patterns and frequency of visits for different visitors group on the Internet. Respondent is a running all Respondents websites as non-commercial ventures. All the domain names have been actively developed and used on daily base by visitors and there is no automatic redirection to any other site. The link to Gentlemenís World is provided on our page since they provide Respondent with content and in no way intents to favour one company over another, there for Respondent can agree to provide a link to Complainant websites, if they also provide Respondent with the content from their related websites. Respondent actually run Respondent sites under collective name (used on the sites) Escorts Online network in order to avoid any confusion with any other website."

The Respondent denies that the Domain Names have been registered in bad faith and are being used in bad faith.

The Respondent claims that it is using the Domain Names in a non-commercial venture and that it is not a competitor to the Complainants. The Respondent points out that it has offered the Complainants a link to the Complainantsí website from the Respondentís website.

The Respondent claims that it did not register the Domain Names primarily for the purpose of selling them to the Complainants. The Respondent points out that it has never offered the Domain Names for sale to the Complainants.

As to the transfer, the Respondent states that when it acquired the Domain Names from Mr. Tyrcha, Mr. Tyrcha informed the Respondent of the possible conflict regarding the <guide-eros.com> domain name and the Respondent is willing to transfer that domain name to the Complainants at cost. The Respondent states that this fact was relayed to the Complainants through Mr. Tyrcha.

The Respondent contends that in the main the Domain Names comprise the principal element of the Respondentís company name, in combination with the names of Canadian provinces. The Respondent contends that the Complainants do not have any names comprising such combinations.

The Respondent contends that it is not making any trade mark use of EROS "as the Respondent views the word Eros is generic and generally in meaning and would be like attempting to trade mark the word Sex."

Finally, the Respondent requests the Panel to make a finding of reverse domain name hijacking.

 

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainants must prove that

(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.

If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence namely:

"If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding."

Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name."

A. Identical or Confusingly Similar

There is no dispute that the Complainants have a registered service mark EROS GUIDE. Given that the domain name <guide-eros.com>, absent the generic domain suffix, is simply a word reversal of the Complainantsí service mark, the Panel has no hesitation in finding that the <guide-eros.com> domain name is confusingly similar to a service mark in which the Complainants have rights. The Respondent disputes that the Complainants can have rights in such a generic term. The fact of the matter, however, is that the service mark registration exists and the specification of services is broad enough to embrace the services of the parties.

All the others of the Domain Names comprise the name EROS either preceded by or followed by the name of a city or state. The only exception is <eros-canadian.com>, where the suffix is an adjectival geographical indication. All those Domain Names are substantially identical in style to the domain names through which the Complainants provide their services.

To appreciate the factual position fully, it is helpful to see the Domain Names set out alongside the Complainantsí domain names.

The Domain Names

The Complainantís domain names

guide-eros.com

eros-guide.com
erosguide.com

arizona-eros.com

erosarizona.com
eros-arizona.com

atlanta-eros.com

eros-atlanta.com
erosatlanta.com

austin-eros.com

eros-austin.com
erosaustin.com

boston-eros.com

eros-boston.com
erosboston.com

chicago-eros.com

eros-chicago.com
eroschicago.com

eros-canadian.com

eroscanada.com
eros-canada.com

toronto-eros.com

eros-Toronto.com

vancouver-eros.com

eros-vancouver.com

lasvegas-eros.com

eroslasvegas.com
eros-lasvegas.com
eros-vegas.com
erosvegas.com

miami-eros.com

eros-miami.com

Other geographical names covered by the Respondent are British Columbia, Alberta, Calgary, California, Manitoba, Ontario, Quebec, London, Montreal and Paris

Other geographical names covered by the Complainants are Phoenix, Los Angeles, San Francisco, San Diego and the UK

The respective sets of names comprising, as they do, the name EROS in conjunction with either the word "guide" or a geographical name are all very similar in appearance. They are families of names. On the face of it, the Panel has no difficulty in accepting that they are potentially confusing, one with the other.

When one appreciates that they are all used for substantially identical services, namely directories for escorts/prostitution services if one adopts the Respondentís nomenclature or directories for adult-themed entertainment services if one adopts that of the Complainants, the potential for confusion has to be very real.

However, paragraph 4(a)(i) of the Policy requires the Complainants to prove that the Domain Names are confusingly similar to a trademark or service mark in which they have rights. The Panel has dealt with the guide-eros domain name, but what about the others?

The remaining Domain Names all feature the name Eros and they are all guides for the relevant services in the geographical location identified in each name.

The Respondent points out that Eros (per se) is not a registered trademark of the Complainants. The Respondent also argues that EROS being descriptive of the services in question is incapable of being sufficiently distinctive to constitute a trademark or service mark in respect of those services.

The Panel accepts that the name EROS is suggestive of erotic services but does not accept that it is incapable of being distinctive in relation to such services.

The Complainants assert and the Respondent does not deny that the Complainants have made extensive business use of the name EROS in relation to such services and the Panel is prepared to accept that in the hands of the Complainants, EROS is a common law mark.

By the same token, the Panel is also prepared to accept on the balance of probabilities that the Complainantsí domain names, which the Complainants use to connect to their trading websites are also common law marks.

On that basis, the Panel is in no doubt that all the Domain Names are confusingly similar to one or more of the Complainantsí service marks, being the registered mark EROS GUIDE, the unregistered mark EROS and the Complainantsí domain names identified above.

Indeed, as will be seen, the Panel is of the view that the Respondent deliberately selected/acquired the Domain Names precisely because they are confusingly similar to the Complainantsí domain names and with a view to disrupting the Complainantsí business and/or causing confusion to internet users.

Accordingly, the Panel finds that the Domain Names are all confusingly similar to a service mark or service marks in which the Complainants have rights.

B. Rights or Legitimate Interests

The Complainants claim and the Respondent does not dispute that the Complainants have been using their websites for commercial purposes from various dates in April 1997, August 1997, May and June 1999 etc.

While the Respondent claims to be using the Domain Names for a non-commercial purpose, the Respondent by its name claims to be an international corporation and it is clearly well versed in the service area in which the Complainants are engaged.

In those circumstances, the Panel finds it inconceivable that the Respondent cannot have been aware when it acquired the Domain Names of the existence of the Complainantsí domain names and websites connected to those domain names. Indeed, the Respondent acknowledges that when it acquired the Domain Names, Mr. Tyrcha, the original registrant informed it of the existence of the dispute between Mr. Tyrcha and the Complainants.

One only needs to line up the Complainantsí domain names alongside the Domain Names (see above) to see the obvious potential for confusion.

Acquiring domain names under those circumstances and for the purpose for which the Respondent acquired them, knowing that confusion would inevitably result, cannot have given the Respondent any bona fide rights or legitimate interests in respect of the Domain Names.

Additionally, acquisition of the Domain Names by the Respondent from Mr. Tyrcha in the circumstances under which they were acquired, i.e. within a month or so of those Domain Names having been registered and in the midst of a dispute over them, seems to the Panel most unlikely to have been an armís length transaction. The Panel takes the view on the balance of probabilities that the purpose of the transfer was to put an obstacle in the way of the Complainants. The Panel takes the view that Mr. Tyrcha and/or the Respondent will have been well aware at that time that the Complainants had a bona fide cause for Complaint.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

By the same reasoning, the Panel is in no doubt that the Domain Names were registered by Mr. Tyrcha and acquired by the Respondent in bad faith and are being used by the Respondent in bad faith.

The Complainants contend that the Respondent registered or acquired the Domain Names with a view to disrupting the Complainantsí business pursuant to paragraph 4(b)(iii) of the Policy. The Complainants identify the Respondentís website as competitor websites. The Complainants also contend that the Respondent registered the Domain Names with a view to diverting internet users from the Complainantsí websites to the Respondentís websites, trading on the back of the Complainantsí goodwill.

The Respondent denies likelihood of confusion, a denial which the Panel rejects out of hand, but also contends that it is not using the Domain Names for a commercial purpose and has no intention of doing so.

The Panel doubts that an entity self-styled "Eros International Corporation" is not a business enterprise. Furthermore, the Panel doubts that the services provided by the Respondent do not have a commercial benefit for the Respondent in some respect.

Forensically, the Panel asks: what possible purpose could a company have for providing a free guide to adult related services around the globe? If the service is free and for no commercial benefit, why invite confusion with a business providing the same or similar services for a business purpose under very similar names? Why, when the Complainants raise complaint, as they did by letter to the original registrant in December 2002, participate in a transfer from the original registrant and with knowledge of the dispute, while the dispute is still in progress?

The Respondent does not answer these questions satisfactorily or in some cases at all. In the view of the Panel, the story just does not hang together.

Even if the Respondentís purpose is non-commercial, it is nonetheless the fact that the Respondentís services do compete with those provided by the Complainants. The services are substantially identical.

Moreover, the examples of bad faith registration and use set out in paragraph 4(b) of the Policy are merely examples. The list is non-exhaustive.

The Panel is of the view that for someone to register/acquire domain names:

(a) which are confusingly similar to the Complainantsí trade mark/service mark;

(b) for a purpose (whether or not commercial) which is calculated to cause damage to the Complainant; and

(c) in circumstances where at time of registration the Respondent is aware of the existence of the Complainant and its trade marks and service marks; and

(d) is aware of the potential for confusion,

then that must constitute bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy.

The Panel finds that all those elements apply here and finds accordingly that the Domain Names were registered in bad faith and are being used in bad faith.

 

7. Decision

In light of the foregoing findings, namely that all the Domain Names are confusingly similar to a service mark or service marks in which the Complainants have rights and that the Respondent has no rights or legitimate interests in respect of any of the Domain Names and that all the Domain Names were registered in bad faith and are being used in bad faith, the Panel directs that all the Domain Names:

<arizona-eros.com>
<atlanta-eros.com>
<austin-eros.com>
<boston-eros.com>
<britishcolumbiaeros.com>
<chicago-eros.com>
<eros-alberta.com>
<eros-britishcolumbia.com>
<eros-calgary.com>
<eros-california.com>
<eros-canadian.com>
<eros-manitoba.com>
<eros-ontario.com>
<eros-quebec.com>
<guide-eros.com>
<lasvegas-eros.com>
<london-eros.com>
<miami-eros.com>
<montreal-eros.com>
<paris-eros.com>
<toronto-eros.com>
<vancouver-eros.com>

be transferred to the Complainants.

The Complaint of reverse domain name hijacking is dismissed.

 


 

Tony Willoughby
Sole Panelist

Dated: March 10, 2003