WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Group Kaitu, LLC , Darkside Productions, Inc. v. NetDirect
Case No. D2011-0220
1. The Parties
Complainants are Group Kaitu, LLC (“Kaitu”) of Richmond, Virginia, United States of America and Darkside Productions, Inc. (“Darkside”) of Richmond, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is NetDirect of Las Vegas, Nevada, United States of America.
2. The Domain Names and Registrar
The disputed domain names <myerfi.com> and <myerosfinder.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2011. On February 3, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On February 3, 2011, GoDaddy.com, Inc. 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 February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. Respondent did not submit any formal response.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on March 11, 2011. 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
Complainants Kaitu and Darkside are related entities that provide Internet guides and directories to adult entertainers and related adult-themed goods and services. By written agreement, Kaitu owns a number of United States trademark registrations and applications for the marks MY EROS, EROS, and MY EROS GUIDE, as used in connection with adult-oriented online services, and licenses the use of such marks to Darkside. See Complaint paragraphs 14 and 15 and Annex 4 to the Complaint.
Since 1997, Darkside has been the owner and operator of websites located at <erosguide.com> and <eros-guide.com>, at which it operates an Internet guide to adult entertainers worldwide. Darkside also owns and operates a similar site at <eros.com> and <myeros.com>. Darkside now owns over 3,100 domains of which 2,776 feature use of either the EROS or EROS GUIDE mark. See Complaint, Annexes 5 and 6. Complainants have invested millions of dollars publicizing and using their marks.
The disputed domain name <myerosfinder.com> was registered on February 19, 2009, and the disputed domain name <myerfi.com> was registered on December 3, 2008. Through the myerosfinder.com website, consumers are redirected to the <myerfi.com> site, which directly competes with Complainants’ online services by selling guide/directory services similar, if not identical, to those of Complainants. See Complaint, Annex 7. As of October 13, 2010, Respondent’s myerosfinder.com domain name redirected to the <myerfi.com> name, which claims that “myerfi has been sold!!! Soon you wil [sic] see a much bigger search engine for your adult needs.”
5. Parties’ Contentions
Complainants assert that the domain name <myerosfinder.com> is confusingly similar to at least one and arguably more than one of Complainants’ marks. Focusing on the MY EROS GUIDE mark, Complainants note that the domain name <myerosfinder.com> merely replaces the word “guide” with “finder.” According to Complainant, “[t]he replacement of `guide’ with a similarly descriptive term with the identical meaning of `guide’ not only fails to obviate confusion between the two phrases; in fact, and particularly in light of the many iterations of EROS, EROS GUIDE and MY EROS GUIDE marks owned by Kaitu, Respondent’s actions are likely to enhance the likelihood of confusion where Respondent competes directly with Complainants, as here.”
Complainants also contend that the domain name <myerosfinder.com> is confusingly similar to the marks EROS, MY EROS, and EROS GUIDE “because the inclusion of one or more generic terms to Complainants’ marks is not likely to obviate confusion.”
Complainants maintain that the <myerfi.com> domain name is also confusingly similar to their marks. “Respondent lacks any right and/or legitimate interest in Respondent’s <myerfi.com> Domain Name. Moreover, allowing Respondent to retain its <myerfi.com> Domain Name would be manifestly unjust as Respondent has in bad faith built traffic to the website by unauthorized use of Complainants’ marks, including, but not limited to its marketing of `my Erosfinder@www.myerfi.com’ and Twitter account `myErosfinder (myerfi).’” See Complaint, Annex 8.
Complainants indicate that Respondent has no rights or legitimate interest in the subject domain names. They point out that they have not licensed or otherwise given permission to Respondent to use Complainants’ marks.
Complainant further argue that Respondent’s domain names are not used in connection with a bona fide offering of goods or services but, rather, are used to divert consumers to a Respondent-owned website, which directly competes with Complainants’ online services. Complainant also contend that there is no evidence to suggest that Respondent is commonly known by either of the subject domain names or that it is making a legitimate noncommercial or fair use of such domain names.
With respect to the issue of bad faith registration and use, Complainants assert that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed sites by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship and/or affiliation of such sites and the competing services offered therein.
According to Complainants, the facts demonstrate that Respondent registered the disputed domain names primarily for the purpose of capitalizing on the trademark and service mark inherent in the names. Complainants assert that their marks are known internationally and have been widely and heavily advertised and that, as a result, Respondent must have been aware of them when it registered the disputed domain names. Complainants also maintain that Respondent should have conducted a good faith search of the database of the United States Patent and Trademark office, as well as a GOOGLE® search, and that, had such searches been conducted, Complainants marks would have been revealed.“ Using Complainants’ Marks in the United States without regard to Complainants’ trademark rights evidences Respondent’s bad faith,” Complainants declare.
Finally, Complainants allege that bad faith is demonstrated by Respondent’s providing of false and incomplete WhoIs contact information.
The Respondent did not reply to the Complainant’s contentions.1
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <myerosfinder.com> is confusingly similar to Complainants’ EROS marks. The domain name, which the Panel finds would be parsed into the words “my,” “eros,” “finder,” incorporates Complainants EROS mark in its entirety adding only the descriptive terms “my” and “finder.”
The Panel further finds that Complainants, through ownership of registrations covering the EROS mark and use thereof, have rights in the registered mark EROS.2
The Panel next turns to whether the disputed domain name <myerfi.com> is confusingly similar to Complainants’ EROS marks. The evidence indicates that Respondent uses <myerfi.com> as an abbreviation for <myerosfinder.com>.3
The issue of whether a domain name is confusingly similar to a mark is determined through a basic comparison of the mark and the domain name. Applying that framework of analysis, the Panel concludes that the domain name <myerfi.com> is not confusingly similar to Complainants’ EROS mark. The terms do not look the same or convey the same commercial impression. There is no evidence that “myerfi” is a well-known or recognized abbreviation of any of Complainant’s marks, 4 as opposed to an abbreviation used by Respondent for “myerosfinder”. The fact that the Panel has found that <myerosfinder.com> is confusingly similar to Complainants’ EROS mark does not necessarily support a determination that an abbreviation for <myerosfinder> is also confusingly similar. Each domain name must be analyzed separately as to whether it is identical or confusingly similar to a complainant’s mark. Complainants’ assertions that <myerfi.com> is confusingly similar to their marks because Respondent has no right or interest in such name and that it would be “manifestly unjust” to allow Respondent to maintain the domain name are more appropriately directed to other elements of the Policy. Such arguments carry no force on the issue of confusing similarity.
B. Rights or Legitimate Interests5
The Panel concludes that Complainants have sustained their burden of proving that Respondent has no rights or legitimate interests in the <myerosfinder.com> domain name. The evidence indicates that Respondent uses this name, which is confusingly similar to Complainants’ EROS mark, in connection with an adult entertainment service that competes with Complainants. As such, it may not be held that Respondent is using the domain name in connection with a bona fide offering of goods or services. Moreover, there is no evidence that Respondent is commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the name. As Complainants note, Respondent “clearly seeks commercial gain from [its] activities.”
C. Registered and Used in Bad Faith
The Panel concludes that Respondent registered and is using the domain name <myerosfinder.com> in bad faith. More specifically, the evidence indicates that that Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed sites by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship and/or affiliation of such sites and/or of the competing services offered therein, within the meaning of paragraph 4(b)(iv) of the Policy. As noted above, the domain name myerosfinder.com is confusingly similar to Complainants’ EROS mark and the parties offer competing services.
Respondent’s providing of false and incomplete WhoIs contact information also supports a determination of bad faith registration and use.
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 name <myerosfinder.com> be transferred to the Complainant Group Kaitu, LLC as requested in the Complaint and that the Complaint be denied with respect to the domain name <myerfi.com>.
Jeffrey M. Samuels
Dated: March 25, 2011
1 While Respondent did not file a response, in an email sent to the Center and dated February 17, 2011, Respondent stated as follows: “To be honest, only because I got note from my registrar last week that the domain myerodfinder.com is about to expire, I found out about this dispute. I already renewed the domain as I had planned a big project with this domain, however, I do not see why this domain should be in trouble just because the other party has everything with eros registered. We all know that eros is a Greek god which is much older than the other party and so I do not see that this domain should be handed over to them. As seen in the emails from the other party, they just want to keep as many domains as possible but never use them.” Inasmuch as Respondent did not file a formal Response, the Panel has had regard to but declines to address in detail the arguments raised in Respondent’s February 17, 2011 email.
2 The Panel notes that Complainant Kaitu also owns a number of trademark applications for the marks MY EROS and MY EROS GUIDE. These marks are not yet registered and Complainant has not provided any evidence as to whether such marks are currently in use. As a result, the Panel is not in position to determine whether Complainant has common law rights in such marks.
3 Earlier UDRP panel decisions dealing with abbreviations focus on whether a domain name which consists of an abbreviation of a complainant’s trademark may be found identical or confusingly similar to such mark. See n. 4, infra. This case involves, in part, whether a domain name that consists of an abbreviation of another domain name that is confusingly similar to a complainant’s mark is also confusingly similar to such mark.
4 Thus, this case is not like Express Messenger System, Inc. v. Golden State Overnight, WIPO Case No. D2001-0063 (<calovernight.com> confusingly similar to CALIFORNIA OVERNIGHT) and Dow Jones & Co. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381(<ewallstjournal.com> confusingly similar to WALL STREET JOURNAL).
5 In view of the Panel’s holding with respect to the <myerfi.com> domain name, its discussion with respect to the remaining elements of the Policy – rights and bad faith – will be limited to the <myerosfinder.com> domain name.