WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Group Kaitu, LLC , Darkside Productions, Inc. v. WP-3 / Philippe Konieczny
Case No. D2013-1394
1. The Parties
The Complainants are Group Kaitu, LLC of Richmond, Virginia, United States of America (“US”); and Darkside Productions, Inc. of Richmond, Virginia, US, represented by Gavin Law Offices, PLC, US.
The Respondent is WP-3 of Szczecin, Poland; and Philippe Konieczny of Piotrkow Kujawski, Poland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <erosescort4u.com> (the “Disputed Domain Name”) is registered with Az.pl, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2013. On August 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Additionally, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 14, 2013.
On August 16, 2013 the Respondent filed a Response before the Center proceeded to the notification of the Complaint. On August 19, 2013 and after the notification of the Complaint, the Center informed the Respondent that in order to know more about its rights and obligations, the Respondent should refer to the “Notification of Complaint and Commencement of Administrative Proceeding” document, which has been sent by the Center on August 19, 2013 by email. The Center noted that Respondent has 20 calendar days from the date of commencement of this administrative proceeding within which to submit to us any Response (copying the Complainant) according to the requirements that are described in the Rules, Paragraph 5, and reminded to Respondent that the last day for sending any Response (copied to the Complainant) to the Center was September 8, 2013.
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 Respondent of the Complaint, and the proceedings commenced on August 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2013. In addition to the Response filed on August 16, 2013 the Center received two informal communications from Respondent on August 19, 2013 and August 23, 2013, respectively.
The Center sent an email communication to the Parties on August 20, 2013 regarding a possible settlement between the Parties. No communication has been received from the Complainant on this regard.
On September 9, 2013, the Center sent an email communication to the Parties regarding the commencement of the Panel appointment process.
The Center appointed Alistair Payne as the sole panelist in this matter on September 17, 2013. 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 have operated an on-line business for approximately 15 years in which they provide directories to adult entertainers and related adult-themed goods and services. The Complainants are related group companies and between them they own or operate under license a range of trademarks including EROS ESCORTS (U.S. Reg. No. 3,641,560) filed on November 7, 2007; EROS (U.K. Reg. No. 2,485,722) filed on April 23, 2008; and EROS GUIDE (CTM Reg. No. 9132101) registered on May 26, 2010 and a variety of corresponding trade marks in these and other jurisdictions. The Complainant’s business is international and is targeted at various countries including the US and the United Kingdom of Great Britain and Northern Ireland (“UK”) and it operates through a range of domain names including <eros.com>, <eros-guide.com> and <erosguide.com>, <erosescort.com> and <erosescort.net> .
The Respondent registered the disputed domain name on 9 December 2010 through the Whoisproxy.com Ltd privacy service as the registered owner.
5. Parties’ Contentions
The Complainants submit that they own, or operate from the other under license, the EROS family of trademarks internationally as described above including in particular the mark EROS ESCORTS which is registered in the US under number 3,641,560. The Complainant submits that the disputed domain name is confusingly similar to its EROS ESCORTS mark in that the addition of the generic term “4u” does not distinguish the disputed domain name from its mark and is therefore confusingly similar.
The Complainants say that they have never authorised the Respondent’s use of their EROS ESCORTS trade mark or of any of their family of EROS marks. They say that the Respondent registered the disputed domain name in 2010 long after the establishment of their business and registration of their marks and that the Respondent uses the disputed domain name to divert consumers to a Respondent owned website, which directly competes with Complainants’ online services by offering and selling search and advertisement services similar, if not identical, to those of the Complainants. This the Complainant submits is not a legitimate use of the disputed domain name and neither amounts to a bona fide offering of services nor is there any evidence of legitimate noncommercial or fair use.
In addition the Complainants say that in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s EROS ESCORTS mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s website or location. Respondent may reside in Poland, but has intentionally registered and uses the disputed domain name to attract and divert American Internet users to its website for commercial gain creating a likelihood of confusion with Complainants’ marks. It says that the Respondent’s U.S. focus is apparent from its listing of advertisements for dating services in all 50 US States in connection with a website containing English (not Polish) content.
It also says that under 4(b)(i) of the Policy the Respondent has registered the disputed domain name in order to prevent the Complainants from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such activity by registering various corresponding domain names including <erosescort4u.co.uk>, <erosescort4u.pl> and <erosescort4u.cz>. As a result the Complainant maintains that the Respondent has both registered and used the disputed domain name in bad faith.
The Respondent submits that the term “eros” is a generic Greek term which means "God of Love" and lists 20 sex industry websites containing the term. It maintains that the Complainant never owned the trademark ESCORT4U or even ESCORT and that the Complainant’s assertion that the site is aimed at American users is false and that the website was created as an IT project to develop the Respondent’s personal skill and that use and uploading of banners on the website is free and that it does not make any money from it.
The Respondent says the first domain name registered was <erosescort4u.pl>. At the time it registered this domain name Respondent states that there was no evidence of Erosguide’s existence on Polish Google (“www.google.pl”). The rest of the domain names (<erosescort4u.co.uk>, <erosescort4u.com> and <erosescort4u.cz>) were registered as part of the package, which is further proof that the Respondent never wanted to affect the Complainant’s business.
In addition the Respondent says that it started the websites at the domain names <erosescort4u.com> and <erosescort4u.co.uk> three months after opening the Polish version of this website and at the time it had no idea that a website named erosguide existed on the market. The Respondent says that it opened American and British versions of its website also as an IT project to check how it would be to have websites in different countries and to run them in foreign languages. It says that its websites at <erosescort4u.com> and <erosescort4u.co.uk> are also free and were not for commercial gain.
Furthermore, Respondent states that it personally wrote to Complainant to exchange banners for free.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a range of trade mark registrations in various jurisdictions featuring the EROS mark but in particular has demonstrated that it owns registered trade mark rights in the EROS ESCORTS mark (under US registration number 3,641,560 ). The disputed domain name includes the term “erosescort” in the singular together with the abbreviation “4u”. In the Panel’s opinion neither the addition of the “s” on “erosescort” nor the addition of the commonly used abbreviation “4u” distinguishes the disputed domain name from the Complainant’s EROSESCORT mark. As a result the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EROSESCORT registered trade mark and that the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has demonstrated a very substantial use of its EROS family of marks whether as trademarks or in the context of a broad family of domain names and dating from as early as 15 years ago and at the very least following registration of the EROS ESCORTS mark in 2007. It says that it has not authorised the Respondent’s use of its mark.
The Respondent only registered the disputed domain names in 2010 and has used them to resolve to websites that appear to also provide directories to adult services and notably at the “www.erosescort4u.com” website appears to include a US geographic state by state listing of adult services as well as including advertisements for individual escort services based both in the US and in the UK. At the date of registration of the disputed domain name, the Complainant says that its various websites were operating including its website at “www.erosescorts.com”. The Respondent says that it was not aware of these websites which the Panel has great difficulty in accepting considering the evidence provided by the Complainant of a Google search demonstrating that the search term “eros escort” brings up numerous references to the Complainant’s sites and considering that the Respondent appears to have developed and operated websites publicizing very similar adult services.
The Respondent has submitted that it only undertook its website as an experiment and for noncommercial reasons and again the Panel finds this very difficult to believe considering the plethora of banner advertisements for escort services, the detailed nature of the US escort service directory guide and the fact that the Respondent developed other international websites along similar lines, for example the website at “www.erosescort4u.co.uk” which is also a jurisdiction in which the Complainant operates actively.
For these reasons the Panel finds that the Respondent has not rebutted the claims made by the Complainant that the Respondent has made an illegitimate use of the disputed domain name because it chose and has used the disputed domain name to divert Internet users to its own website for its own commercial purposes. As a consequence the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint succeeds under the second element of the Policy.
C. Registered and Used in Bad Faith
At the date of registration of the disputed domain name, the Complainant had as noted above been operating its various Eros branded websites for quite some time. The Complainants website at <erosescorts.com> and <erosescorts.net> were also operational along with numerous other websites. In these circumstances it seems to the Panel highly unlikely that the Respondent was not aware of the Complainant’s websites and EROS marks in circumstances that a simple web search would have brought them up and of the similarities between the respective party’s operations. As a result and also for the reasons noted above, the Panel finds that in all likelihood and on the balance of probabilities the disputed domain name was registered with knowledge of the Complainant’s interests and as a result in bad faith.
As set out above under the discussion concerning the second limb of the Policy, it appears to the Panel that the website at the disputed domain name has all the hallmarks of being for commercial purposes and is obviously targeted largely at a US based audience which is a key market for the Complainant. Further, the Panel does not accept the Respondent’s explanation of it being a test site for non-commercial training purposes. In these circumstances the Panel finds that the Complainant’s case under paragraph 4(b)(iv) of the Policy has been made out and that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s by creating a likelihood of confusion with Complainant’s EROS ESCORTS or EROS family of marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s website or location.
Accordingly the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint succeeds under the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <erosescort4u.com> be transferred to the Complainant.
Date: September 30, 2013