Complainants are Group Kaitu LLC and Darkside Productions, Inc., United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is Sunlane Media LLC, United States of America, represented by John Berryhill, United States of America.
The disputed domain names <eroscams.com>, <erosdating.com>, <erosentertaiment.com>, and <erosstories.com> are registered with Fabulous.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2008. On November 27, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain names. On November 28, 2008, Fabulous.com transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 December 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2008. The Response was filed with the Center on December 26, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on January 14, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 31, 2008, Complainant submitted a proposed supplemental filing by email to the Center, to which Respondent replied on the next business day, January 2, 2009. The Center referred these communications to the Panel for his determination as to whether to allow them. These communications are addressed in Section 5 below.
Both parties are active participants in the business of online adult entertainment. Complainant1 holds six trademarks that include the word EROS that are registered with the United States Patent and Trademark Office (USPTO). The first of these was registered in 2002; all claim a first use in commerce of 2001. Complainant operates adult websites at <erosguide.com>, <eros-guide.com>, and <eros.com>. Complainant asserts, without supporting evidence, that some or all of these have been so operating since 1997.
Respondent operates adult websites principally at websites that use as their dominant feature the word LITEROTICA. Respondent owns trademarks registered with the USPTO that consist of or incorporate this term. Respondent registered the disputed domain names at various times in 2008. Respondent maintains an adult site at one of the disputed domain names; an Internet user who enters any of the others into his or her browser is automatically redirected to an adult site maintained by Respondent at another web address.
Shortly after receipt of the Complaint, Respondent's counsel contacted Complainant's counsel and offered to transfer the disputed domain names to Respondent. Email communications between the parties' representatives continued through December 23, 2008, concerning the disputed domain names and certain other domain names owned by Respondent that included the word EROS. When the parties could not reach agreement, Respondent filed its Response, which includes the initially unqualified statement “Respondent requests this Panel to order transfer of the [disputed] domain names to the Complainant”. Later in the Response, however, Respondent states that one of the disputed domain names, <erosentertaiment.com>, incorporates verbatim the USPTO-registered mark of a third party, and suggests that the Panel order this mark cancelled rather than transfer it to Complainant.
Despite Respondent's reservation noted above, the Panel reads the Response as a consent to transfer all the disputed domain names to Complainant. As transfer constitutes all the relief to which Complainant would be entitled in a UDRP proceeding after a full review of the merits, ordinarily that would end the Panel's analysis. The Panel sees no reason here to depart from that sensible approach. The principal occasion for attention to the substantive issues raised in the Complaint in the face of a consent to transfer is for precedential value against a serial cybersquatter, to facilitate a subsequent complainant's charge that the respondent had engaged in a “pattern” of conduct violating the Policy, see Policy, paragraph 4(b)(ii); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.3; Almaden Valley Athletic Club v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0600.2 As neither Respondent nor any entity with LITEROTICA in its name has been named as a respondent in any reported Policy proceeding, no such circumstance obtains in this case. There is no reason and no need for any findings on the merits, so the Panel makes none.
There is similarly no basis for cancellation, rather than transfer, of the <erosentertaiment.com> domain name. First, this domain name is not, as Respondent asserts, identical to the third party's trademark, which is EROS ENTERTAINMENT (not “entertaiment”). More importantly, the Policy provides a ready means to resolve any objection from the owner of the corresponding trademark following transfer to Complainant. Respondent here has no basis vicariously to assert any third party's rights. Complainant has requested and Respondent has agreed to transfer rather than cancellation, so transfer will be the order.
The parties' email communications related to this proceeding, including the post-Response emails, indicate that disagreements may remain between them. None of these, however, has anything to do with the domain names put at issue by the filing of the Complaint. Any other domain names that the parties dispute, indeed any other matter they cannot resolve amicably, belongs in other proceedings or the national courts; this Panel has no jurisdiction to act upon them.
In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <eroscams.com>, <erosdating.com>, <erosentertaiment.com>, and <erosstories.com> be transferred to Complainant.
Richard G. Lyon
Dated: January 19, 2009
1 One of the Complainants owns trademarks that are licensed to the other. For convenience, the Panel refers to the two Complainants collectively as “Complainant”.
2 The panel in the Almaden case further noted that “There is therefore a public interest in examining the merits in such cases, both for potential future complainants and in general to discourage repeated attempts by respondents, such as this one, to manipulate the panel's powers under paragraphs 10(a) and 10(c) to evade adverse factual findings under the Policy”. A full analysis may also be warranted when the respondent claims to consent to transfer but has delayed taking any action to effect it, Legacy Health System v. Texas International Property Associates, WIPO Case No. D2008-1709.