WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Group Kaitu, LLC and Darkside Productions, Inc v. KerryWeb Enterprise, Inc.
Case No. D2007-0718
1. The Parties
Complainants are Group Kaitu, LLC and Darkside Productions, Inc, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is KerryWeb Enterprise, Inc., Santa Fe Springs, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <eros-chicago.net>, <eros-dallas.net>, <erosdallas.net>, <eros-dc.net>, <erosescort.net>, <eros-london.net>, <eroslondon.net>, <eros-miami.net>, <erosmiami.net>, <eros-ny.net>, <erosny.net> and <erosusa.net> are registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2007. On May 15, 2007, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On May 17, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2007.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on July 2, 2007. 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 Group Kaitu, LLC (“Kaitu”) owns various trademarks and service marks described below. Complainant Darkside Productions, Inc. (“Darkside”) is a licensee thereof.
Kaitu is the owner of various United States service marks for EROS, some of which claim use since August 1997. Each of the marks relate to services in the field of adult-themed services and entertainment.
Since 1997, Darkside has owned and operated sites at “www.eros.com” and other “EROS” sites.
Additionally, Kaitu owns and has licensed to Darkside over 2,300 domain names featuring the EROS mark, as modified by a geographic location, which concerns adult-themed services physically located in the specific geographic region and cities referenced in the particular domain name. An example is <eros-london.com>. Some of these geographic-specific domain names were registered as early as 1997.
Complainants allege that the EROS mark is internationally known in the field of providing Internet guides or directories to adult entertainers and related adult-themed goods and services. Complainants have invested millions of dollars publicizing and using the marks.
Respondent registered the domain names on February 27, 2003.
5. Parties’ Contentions
Complainant states that the only difference between eleven of Respondent’s domain names and Complainant’s marks rest in the mere addition by Respondent of a non-distinctive geographic identifier to the EROS mark. For all but one of Respondent’s domain names ending in .net, Complainant owns the corresponding .com website. Complainant alleges that the Respondent’s domain names are confusingly similar to Complainant’s marks and existing domain names, particularly in view of the similar and competitive adult-themed content of both parties’ websites.
Complainant also alleges that Respondent is not licensed by, nor has obtained express or implied permission to use Complainant’s marks or domain names, and thus Respondent has no rights or legitimate interests in the subject domain names.
Complainant alleges that Respondent clearly knew of Complainants’ marks and domain names at the time of registration, and has registered and is using the domain names in bad faith, and has engaged in a pattern of bad faith conduct.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) to (iii) of the Policy, for Complainants to prevail and have the disputed domain name transferred to themselves, Complainants must show that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) the respondent(s) has no rights or legitimate interests in the disputed domain name; and
(iii) the respondent(s) has registered and is using the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have rights in the EROS marks, based on the various United States registrations held by Kaitu and licensed to Darkside.
The Panel finds that each of the disputed domain names contains the EROS registered mark, which is owned by Kaitu. Based on a brief review of the voluminous list of domain names set forth in Exhibit 5, the Panel also notes that the disputed domain names are identical but for the suffix .net, to the domain names owned by Kaitu and Darkside, as set forth below:
|Disputed Domain Name||Complainant’s domain name|
It is well established since the earliest domain name disputes that the competitor’s registration and use of various geographically modified versions of the Complainant’s mark are confusingly similar to Complainant’s mark. In particular, see Darkside Productions Inc. & Group Kaitu, LLC v. Eros International Corporation, WIPO Case No. D2003-0065, involving Complainants and the EROS mark.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s registered mark and Complainant’s domain names, and that Complainant meets the first criterion of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Respondent has not been granted any rights by Complainant to use Complainant’s EROS mark, which is contained in its entirety in the disputed domain names. On the evidence before the Panel, Respondent does not appear to make any legitimate non-commercial or fair use of the domain name. The Panel is satisfied that Complainants have made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name. Respondent has not rebutted this.
Based on the foregoing and considering Respondent’s use of the domain name explained further below under paragraph 6.C., the Panel finds that Respondent does not have any rights or legitimate interests with respect to the domain names and that Complainants meet the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Respondent is located in the United States of America, where Complainant has registered its EROS mark. This Panel finds that Respondent had at least constructive notice of Complainant’s mark, which is used in its entirety in the disputed domain name. Accordingly, this Panel infers that Respondent was aware of Complainant’s mark when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests.”
Paragraph 4(b)(iv) of the Policy states that there is bad faith if Respondent has attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of their website or of a product or service on their website or location.
Complainants’ and Respondent’s both act as guides to adult-themed entertainment, services and goods, and are competitive with each other. Respondent has used the disputed domain name, which contains Complainant’s EROS mark in its entirety, for commercial gain and with the intent to misleadingly divert consumers to other websites.
Additionally, this Panel notes that Respondent appears to have systematically registered multiple domain names in a pattern directed against the Complainants, which can be taken as evidence of bad faith. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046.
For the reasons given above, the Panel finds that Complainants have established that Respondent has registered and used the domain names in bad faith under paragraph 4(b) 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 following domain names <eros-chicago.net>, <eros-dallas.net>, <erosdallas.net>, <eros-dc.net>, <erosescort.net>, <eros-london.net>, <eroslondon.net>, <eros-miami.net>, <erosmiami.net>, <eros-ny.net>, <erosny.net> and <erosusa.net>, be transferred to the Complainants.
Sandra A. Sellers
Dated: July 12, 2007