WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Group Kaitu, LLC and Darkside Productions, Inc v. Steven Maese
Case No. D2006-0643
1. The Parties
The Complainant is Group Kaitu, LLC and Darkside Productions, Inc, Oakland, California, United States of America, represented by Gavin Law Offices, PLC, Richmond, Virginia, United States of America.
The Respondent is Steven Maese, Sandy, Utah, United States of America.
2. The Domain Names and Registrar
The disputed domain names:
<eros-utah.com> are registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 24, 2006, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On May 31, 2006, Schlund + Partner 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.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 19, 2006. The Center verified that the Complaint together with the amendment to 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 June 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2006.
The Center appointed M. Scott Donahey as the sole panelist in this matter on August 14, 2006. 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.
4. Factual Background
Complainant is the owner of the following marks registered with the United States Patent & Trademark Office (“USPTO”): EROS GUIDE and EROS. The registrations date back to March 2002 and show a first use in commerce in August 1997. Since 1997 Complainant has operated web sites to which the domain names <erosguide.com> and <eros-guide.com> resolves. The web site offers a guide to adult entertainers worldwide. Complainant also owns more than 2,200 geographic specific domain names, such as <eros-brazil.com>, <eros-florida.com>, < eros-tampa.com> which resolve to geographically oriented web sites, (Complaint, Annex 5). Complainant also owns EROS sites which offer specialty products, such as <eros-zine.com>. Id. Complainant has expended millions of dollars in publicizing and using its marks.
Respondent registered the domain names at issue on February 24, 2006, (Complaint, Annex 7). Complainant learned of the domain names at issue on or about March 27, 2006. The domain names at issue resolve to a web site where adult entertainment is offered (Complaint, Annex 7). On March 27, 2006, and on April 24, 2006, Complainant sent Respondent’s attorney a cease and desist letter demanding that the domain names at issue be transferred to Complainant, (Complaint, Annex 8).
5. Parties’ Contentions
Complainant contends that the domain names at issue are confusingly similar to Complainant’s registered marks, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the domain names at issue were registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no legitimate rights or interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The addition of a geographical suffix to a trademark used in a domain name does not alter the fact that the domain name incorporating the trademark is confusingly similar to the mark. Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (<walmartcanada.com>); CBS Broadcasting Inc. v. Sale’s (NYCBS-DOM), WIPO Case No. D2000-0255 (<nycbs.com>).
Accordingly, the Panel finds that the domain names are confusingly similar to Complainant’s trademarks
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.”
In the present case the Complainant makes a prima facie case that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the domain names at issue long after Complainant’s trademark rights were established. Respondent and Complainant were in the same industry, and one must assume that Respondent was aware of Complainant and its business. Respondent uses the domain names at issue to resolve to a commercial site at which services directly competitive to those of Complainant were offered for sale. The Panel finds that Respondent registered the domain names and is using them to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its EROS marks as to the source, sponsorship, and/or affiliation with Respondent and the offered services. This constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <eros-utah.com>, <eros-saltlake.com>, <eros-saltlakecity.com>, and <eros-slc.com> be transferred to the Complainant.
M. Scott Donahey
Dated: August 28, 2006