World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc. v. Whois Privacy Services Pty Ltd and Dzone Inc., Yeonju Hong

Case No. D2011-2226

1. The Parties

The Complainants are Group Kaitu, LLC and Darkside Productions, Inc. of United States of America, represented by Gavin Law Offices, PLC, United States of America.

The Respondents are Whois Privacy Services Pty Ltd of Australia and Dzone Inc., Yeonju Hong of the Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <erosreviews.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On December 20, 2011, Fabulous.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on December 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on December 30, 2011.

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” 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 the Respondents of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on January 25, 2012.

The Center appointed Anders Janson as the sole panelist in this matter on February 3, 2012. 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

The Complainants are Group Kaitu, LLC and Darkside Productions, Inc. (collectively “Complainants”) operating in the business of providing adult-themed entertainment services in the United States and globally. The Complainants have used the trade name “Eros” continuously for over fourteen year in connection in the field of providing Internet guides and/or directories to adult entertainers and related adult-themed goods and services.

The Complainants are the owner of numerous trademarks registered with the United States Patent and Trademark Office (USPTO), such as

- EROS, U.S. Reg. No. 2 793 831, filed on April 24, 2002 and registered December 16, 2003, for class 41, providing links to the websites of others in the field of adult-themed entertainment;

- EROS, U.S. Reg. No 2 794 843, filed on December 9, 2002 and registered December 16, 2003, for class 35, providing dissemination of advertising for the goods and services of others via the global computer network; providing on-line directory information services also featuring hyperlinks to other websites; promoting the goods and services of other by providing a website at which users can link to the adult themed web sites of others; promoting the goods and services of others by means of operating an on-line shopping mall with links to the adult-themed retail websites of others; providing online shopping service featuring adult themed products and services via the global computer network; for class 42 providing customized on-line web pages featuring user-defined information which includes search engines and on-line web links to other adult themed websites;

- EROS.COM, U.S. Reg. No. 3 656 222), filed on November 7, 2007 and registered July 21, 2009 for class 42, providing search engine services for obtaining data on a global computer network in the field of adult-themed products, services and entertainment;

- EROS GUIDE, U.S. Reg. No. 2 549 369, filed June 26, 2000, and registered March, 19, 2002, for class 35, dissemination of advertising for the goods and services of others via the global computer network;

- EROS GUIDE, U.S. Reg. No. 3 656 223, filed November 7, 2007 and registered July 21, 2009, for class 41, providing online publications, namely, a magazine and articles in the field of adult-themed entertainment via a global computer network;

- EROS ESCORTS, U.S. Reg. No. 3 641 560, filed on November 7, 2007 and registered on June 23, 2009, for class 35, promoting the goods and services of others by providing a website featuring advertisements, banners and links to the websites of others in the field of adult-themed products, services and entertainment;

- EROS-GUIDE.COM, U.S. Reg. No. 3 539 209, filed on November 7, 2007 and registered on December 2, 2008, for Class 41; providing information in the fields of adult-themed entertainment via the global computer network;

- WWW.EROS-GUIDE.COM U.S. Reg. No. 3 539 208, filed November 7, 2007 and registered December 2, 2008, for class 42; Computer services, namely, creating an online community of adult-themed service providers and adult-themed service consumers, providing search engines for obtaining data and content in the area of adult-themed products, services and entertainment via a global computer network.

The Complainants have used the trade name “Eros” for over fourteen years in the field of providing Internet guides and/or directories to adult entertainers and related adult-themed goods and services.

The Complainants registered each of the domain names <eros-guide.com> and <erosguide.com> in April 1997 and further the domain name <eros.com> was registered in 2001. The Complainants have over time expanded their initial product and service offerings under the trade name “Eros” and “Eros Guide” to include service, offerings in adult-themed entertainment at over 3 100 domain names, comprised primarily of one of the “Eros” or “Eros Guide”.

The disputed domain name was registered in July 2003.

The Complainants and Respondents are in the same field of adult-themed entertainment and the Complainants allege that the disputed domain name is used to redirect traffic to the website “www.theeroticreview.com” which provides services in the field of adult-themed entertainment. According to the Complainants, the name of the Respondents’ business is the “The Erotic Review” and the Respondents’ website prominently features “Welcome to TER!” and “What is The Erotic Review? Find out now!”

5. Parties’ Contentions

A. Complainant

The Complainants contend that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

1) The dispute domain name is confusingly similar to the Complainants’ EROS and/or EROS GUIDE marks. Further, the addition of a generic or descriptive word to the EROS and/or EROS GUIDE marks does not alter the fact that the disputed domain name is confusingly similar thereto and confusion cannot be avoided by disingenuously combining the Complainants’ EROS mark with the word “reviews”.

2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as the name is not used in connection with bona fide offering of goods or services, no evidence exists to suggest that the Respondents have been commonly known by the disputed domain name, and the Respondents are not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The disputed domain name was registered in July, 2003, well after the Complainants registered and operated the <eros.com>, <erosguide.com> and <eros-guide.com>. Further the Complainants state that the Respondents clearly seek commercial gain from their use of the disputed domain name by virtue of the advertising and revenue generating content on the website to which the disputed domain name resolves and that no evidence exists to suggest that the Respondents have been commonly known by the disputed domain name.

3) The Complainants contend that the disputed domain name was registered and has been used in bad faith as set out in paragraph 4(b) of the Policy. The Complainants argue that the Respondents knew of the Complainants’ trade name at the time they registered the disputed domain name. In alternative, the Respondents operated in bad faith by failing to research the disputed domain name prior to registration. The Respondents should have conducted a good faith search of the USPTO database, as well as a good faith search using an Internet search engine. Furthermore, the Complainants state that the name of the Respondents’ business is “The Erotic Review” and is also referred to as “TER”. The Respondents have intentionally registered and uses the disputed domain name containing the EROS mark in bad faith to trade on the Complainants’ brand and to attract and divert, for commercial gain Internet users to their website. The Respondents selected the disputed domain name subsuming the Complainants EROS mark in its entirety in an effort to benefit from the goodwill of the Complainants and attract and divert Internet users interested in adult entertainment. The Respondents’ registration and use of the disputed domain name to divert consumers to their website by creating a likelihood of confusion with the Complainants’ trade name and websites as to the source, sponsorship, affiliation and/or endorsement of the Respondents’ website with the Complainants’ constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. The Complainants finally state that the Respondents are a known cyber squatters and has historically registered 6 768 domains and holds 819 as of December 29, 2011. Evidence of cybersquatting and a pattern of registrations by a respondent incorporating the marks of others to prevent the true owners of the trademarks in corresponding domain names is evidence of bad faith.

B. Respondent

The Respondents did not reply to the Complainants’ contentions.

6. Discussion and Findings

Given the case file and Respondents’ failure to file a response, the Panel, where appropriate, accepts as true the contentions of the Complainants. The Respondents default does not however automatically lead to a ruling decision for the Complainants. To the contrary the Complainants still must establish a prima facie case showing that under the Policy they are entitled to transfer of the disputed domain name.

Paragraph 4(a) of the Policy provides that, to justify transfer of the disputed domain name, the Complainants must prove each of the following:

(i) that the disputed domain name registered by the Respondents is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <erosrewievs.com>. The Complainants are the holder of the domain name <eros.com>, <erosgiude.com> and <eros-guide.com>, as well as the registered trademark EROS.

The disputed domain name contains the Complainants’ mark EROS in its entirety with the added suffix “reviews” and the generic and functional top level domain name “.com”. The question is if the addition of “reviews” renders the disputed domain name dissimilar from the Complainants’ registered trademark.

In a large number of previous decisions, UDRP panels have found that the fact that a domain name incorporates a complainant’s registered mark is sufficient to establish identical or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel further finds that the suffix “reviews” adds little to the overall impression of the disputed domain name. Internet users are very likely to assume that the addition of the word “reviews” to the trademark signifies a website associated with the Complainants. The Panel therefore finds that the addition of the term “reviews” does not diminish the similarity between the disputed domain name and the Complainants’ trademark.

The disputed domain name must therefore be considered confusingly similar to the Complainants’ registered trademark. The Panel holds that the Complainants have established the first element of paragraph 4(a) of the Policy,.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondents, shall demonstrate their rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, namely:

(i) before any notice to the Respondents of the dispute, the use by the Respondents of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondents (as an individual business or other organization) have been commonly known by the domain name, even if the Respondents have acquired no trademark or service mark rights; or

(iii) the Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

The disputed domain name was first registered in July 2003. From what has been put forward by both Parties it is clear that the Respondents have no derived right to use the Complainants’ trademark as a licensee or otherwise according to any agreement with the Complainants. The Complainants assert that the Respondents have chosen the domain name only because it is similar to the Complainants’ trademarks in the purpose of generating traffic and attract Internet users who are looking for the Complainants’ website for their own commercial gain. The Complainants furthermore assert that the Respondents have not made a bone fide offering of goods and services pursuant to paragraph 4(c) of the Policy.

The Respondents have not filed a Response in accordance with the Rules. In those circumstances, when the Respondents do not have an obvious connection with the disputed domain name, the mere assertion from the Complainants that the Respondents have no rights or legitimate interests is enough to shift the burden of proof to the Respondents to demonstrate that such rights and legitimate interests exists.

The Respondents have not demonstrated or argued that they used or prepared to use the disputed domain name in connection with a bone fide offering of goods or services or that any other right or legitimate interest exists. Registration of a domain name in itself does not establish rights or legitimates interest for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondents have not presented any evidence of rights or legitimate interests in using the disputed domain name and have no obvious connection to it. The Panel therefore holds that the Complainants have established the second element of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Finally, the Panel has to consider the question of the disputed domain name having been registered and being used in bad faith. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which can be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.

(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of pocket costs directly related to the domain name; or

(ii) The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a like hood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.

The Complainants have asserted that the Respondents must have known of the Complainants’ line of business and the Complainants’ trade name and registered domain names at the time of registration and subsequent operation of the disputed domain name.

With reference to the above-mentioned and the fact that it is highly unlikely that the Respondents by utter accident registered the disputed domain name, which differs from the Complainants’ trademark only by the addition of the suffix “reviews”, the Panel finds it more likely than not that the Respondent by creating a likelihood of confusion with the Complainants’ mark as to the source either are trying to mislead consumers in order to attract them to an intended website making them believe that the website is associated or recommended by the Complainants. The Panel finds that this act constitutes bad faith.

The Panel therefore concludes that the Complainants have proven that the Respondents were acting in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <erosreviews.com> be transferred to the Complainants.

Anders Janson
Sole Panelist
Dated: February 17, 2012

 

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