WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Group Kaitu, LLC , Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc.
Case No. D2005-1087
1. The Parties
The Complainants are Group Kaitu, LLC and Darkside Productions, Inc., Oakland, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.
The Respondent is Group Kaitu LLC aka Manila Industries, Inc., Santa Ana, California, United States of America, represented by Rajiv Jain, United States of America.
2. The Domain Names and Registrar
The disputed domain names are as follows:
The disputed domain names are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October�14,�2005. The Complaint identified the Respondent as Manila Industries, Inc. On October�21,�2005, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain names at issue. On October�21,�2005, Compana LLC transmitted by email to the Center its verification response, indicating that Group Kaitu, LLC was listed as the registrant, and providing the contact details for the registrant. In response to notification by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on November�14,�17 and�18,�2005, respectively. The Center verified that the Complaint together with the amendments to 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 the Respondent of the Complaint, and the proceedings commenced on November�21,�2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December�11,�2005. The Respondent did not submit a response as of that date. Accordingly, the Center notified the Respondent’s default on December�13,�2005. Subsequently, on December�14,�2005, legal counsel for Manila Industries, Inc. transmitted an email to the Center, to which the Complainants replied by email on December�15,�2005. Counsel for Manila Industries sent a second email to the Center on December�16,�2005.
The Center appointed William R. Towns as the sole panelist in this matter on December�20,�2005. 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. Due to unforeseen circumstances, the date for the submission of the Panel’s decision was extended.
4. Factual Background
The Complainant Group Kaitu, LLC (“Kaitu”) is the owner of six United States Patent and Trademark Office (“USPTO”) registrations for the following marks: EROS, EROS GUIDE, EROS MEN, and PERVY. All of these marks were registered between March�19,�2002 and December�16,�2003, except for EROS MEN, which was registered on September�13,�2005. Kaitu also has registered and owns a number of domain names incorporating its EROS, EROS GUIDE and PERVY marks, and Kaitu has licensed its marks and domain names to the Complainant Darkside Productions, Inc. (“Darkside”) for use in connection with the operation of various websites featuring adult-oriented entertainment and other adult-themed topics.
According to the WHOIS database maintained by the registrar of the disputed domain names, as late as October�7,�2005, a week before the Complaint was filed with the Center, the registered holder of each of the disputed domain names was Manila Industries, Inc. However, when the Center contacted the registrar subsequent to the filing of the Complaint to verify this information, the registrar indicated that the registered holder of these domain names was Group Kaitu, LLC, a name identical to the name of one of the Complainants. The registrar has not disclosed the exact date on which this purported transfer was made.
It is undisputed that Manila Industries caused the name of the domain name holder to be changed to Group Kaitu, LLC, and that this change was effected either a few days before or shortly after the Complainant was filed with the Center, but before the Center’s request for registrar verification was transmitted to Compana LLC. In that regard, Paragraph 8(a) of the Policy prohibits a domain name holder from transferring the domain name to another holder during the pendency of an administrative proceeding. The Center’s subsequent search of the registrar’s WHOIS database revealed that false contact information was provided by the Respondent in connection with this purported transfer of the disputed domain names.
5. Parties’ Contentions
A. Complainant
The Complainants contend that they have established rights through registration and use of the service marks EROS, EROS GUIDE, EROS MEN, and PERVY (hereinafter the “Complainants’ marks”). Kaitu is the registered owner of these marks and a number of domain names incorporating these marks, which Kaitu has licensed to Darkside in connection with the operation of various adult-oriented websites. According to the Complainants, Kaitu and Darkside are related companies.
The Complainants maintain that Manila Industries, Inc., the holder of the disputed domain names when the Complaint was filed, remains the beneficial holder of the disputed domain names, notwithstanding that the registrar’s WHOIS database currently reflects that “Group Kaitu, LLC” – ostensibly one of the Complainants – is the current holder of record of the disputed domain names. The Complainants contend that, after the date the original Complaint was electronically filed and served, the Respondent, of its own accord and without the approval of Complainants, caused the disputed domain names to be transferred ostensibly to the Complainant Kaitu, in an attempt to circumvent Rule 8(a) of the Policy, which prohibits a domain name holder from transferring the domain name to another holder during the pendency of an administrative proceeding. The Complainants contend that the Respondent in fact retains all beneficial interest in and control over the disputed domain names, and points out that prior Panels have viewed this practice, commonly referred to as “cyberflying”, to be evidence of bad faith.
The Complainants assert that the disputed domain names are confusingly similar to trademarks or service marks in which the Complainants have established rights. According to the Complainants, the only difference between the disputed domain names and the Complainants’ marks is the addition of non-distinctive geographic identifiers, generic terms such as “entertainment”, or aberrant spelling of the Complainants’ marks.
The Complainants further assert that the Respondent has no rights or legitimate interests in the disputed domain names. First, according to the Complainants, the Respondent has not been authorized to use the Complainants’ marks. The Complainants further contend that the Respondent has not been commonly known by the domain names, and that the Respondent is not making any legitimate non-commercial or fair use of the domain names. Further, the Complainants argue that the Respondent is using the domain names to direct Internet users to websites offering adult-oriented services that compete with the Complainants’ services, or otherwise is passively holding the domain names
The Complainants allege that the Respondent registered and is using the disputed domain names in bad faith. First, the Complainants contend that through the registration of multiple domain names incorporating the Complainants marks, the Respondent has engaged in a pattern of conduct to prevent the Complainants from using their marks in corresponding domain names. Second, the Complainants maintain that the Respondent is intentionally using the domain names to attract internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services offered on those websites. According to the Complainants, the Respondent’s website contains links to, among other things, adult personals and geographically-targeted “adult dating” services that are directly or indirectly competitive with the Complainants’ services.
Finally, the Complainants assert the Respondent has engaged in the practice of “cyberflying” in an attempt to circumvent Paragraph 8(a) of the Policy and disrupt this proceeding. The Complainants’ urge that bad faith registration and use should be found from the Respondent’s conduct.
B. Respondent
The Respondent did not reply to the Complainant’s contentions within the time allotted in the Rules for a Response, but counsel for Respondent on December�14,�2005, forwarded an email to the Center claiming that the disputed domain names had been transferred to the Complainant, insisting on this basis that the administrative proceeding be dismissed in accordance with the Rules, and demanding that any “mention of [Manila Industries, Inc] to the UDRP be stricken from all publications from this case.” The Panel has determined that this email communication will be treated as a Response for purposes of these proceedings. The Panel deems the Complainant’s December�15,�2005 email in reply to the Respondent’s December�14,�2005 communication, and the Respondent’s subsequent email in response thereto, as supplemental submissions within the meaning of the Rules. These supplemental submissions were not requested by the Panel, contain no new or material information pertaining to the dispute, and accordingly the Panel pursuant to Rule 12 will not consider these supplemental submissions in reaching a decision in this case. The Panel notes that the Respondent has chosen not to address any of the contentions set forth in the Complaint other than the charge of “cyberflying”.
5. Procedural Issues
Rule 8(a) of the Policy prohibits the transfer of a domain name registration to another holder during a pending administrative proceeding brought pursuant to Paragraph 4 of the Policy. Paragraph 8(a) is susceptible to an interpretation that would permit transfers of registration after notice of the complaint to the respondent but before official commencement of the proceedings by way of notification from the provider. Prior Panel decisions have refused to embrace this interpretation, noting that to do so would visit an injustice on complainants who have initiated complaints in accordance with the Policy and the Rules. See, e.g., Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc., WIPO Case No. D2004-0359; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. Indeed, the distinguished panelists in these decisions aptly observed that such an interpretation would appear to permit, if not actually encourage, the phenomenon of “cyberflying”, where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding.
This Panel is in agreement with the prior decisions of these distinguished panelists. Further, even were Paragraph 8(a) to be narrowly read to provide that a proceeding is pending only upon commencement of the proceeding in a formal sense, the Panel concludes from the circumstances of this case that the named Respondent in the original Complaint – Manila Industries, Inc. – has been the beneficial holder of the disputed domain names at all times material hereto – and is therefore the proper Respondent in this proceeding, notwithstanding the ostensible transfer of the registrations to one of the Complainants following the filing of the Complaint. See British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683.
The record before this Panel presents a virtual textbook case of “cyberflying” with a disingenuous twist. Manila Industries, Inc., being named as the Respondent in this case – and with knowledge of its obligations under Paragraph 8(a) – proceeded without notification to either the Complainants or to the Center to change the contact details of the registrations to one of the Complainant’s contact details. However, the record is clear that the Respondent did not furnish the registrar with the correct contact information for this Complainant, although the Respondent had such in its possession. Instead, the Respondent intentionally falsified the contact information for the Complainant.
Moreover, the record provides other evidence that Respondent engaged in “cyberflying” in an attempt to place it beyond the reach of the Policy. The Respondent’s December�14,�2005 communication to the Center, through its legal counsel, includes the following:
The domain names that are mentioned in the complaint have been transferred to the Complainant. According to UDRP rules, a complaint must be against the Registrant of record. My client is not the registrant of record and no mention to my client should be made in the UDRP.
The Respondent thus acted with full knowledge of Paragraph 8(a) of the Policy, and with an appreciation of how the Rules might be manipulated in an effort to avoid the mandatory administrative proceeding the Respondent agreed to submit to as a necessary condition of its registration of the disputed domain names. Under such circumstances, this Panel can conceive of no plausible explanation for the Respondent’s actions other than a deliberate attempt to disrupt these proceedings, circumvent Paragraph 8(a) of the Policy, and evade the jurisdiction of the Panel. For all of the foregoing reasons, Manila Industries, Inc. has been properly named as the Respondent, properly notified of this proceeding, and the jurisdiction of the Panel properly invoked.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No.�D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No.�D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs�169 & 170. Paragraph�15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph�4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph�4(i).
Paragraph�4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph�4(c) in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph�4(a), a number of panels have concluded that paragraph�4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.�D2000-0270.
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain names are confusingly similar to Complainants’ marks for purposes of paragraph�4(a)(i) of the Policy. The Complainants have established rights in these marks through registration and use. At a bare minimum, the mark is entitled to a presumption of validity by virtue of registration with the United States Patent and Trademark Office. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No.�D2000-0047. The Panel further observes that the Respondent has chosen not to contest that the disputed domain names are confusingly similar to the Complainants’ marks.
The disputed domain names all incorporate at least one of the Complainants’ marks in its entirety. The critical inquiry under the first element of paragraph 4(a) is simply whether the mark and domain name, when directly compared, have confusing similarity. The Panel finds that to be the case here. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No.�D2000-0662 (domain name incorporating mark in its entirety is confusingly similar). The Respondent’s combination of the Complainant’s mark with non-distinctive geographic identifiers and generic terms such as “entertainment” does nothing to dispel this confusing similarity. Indeed, given the strong similarity that many of the disputed domain names bear to domain names previously registered by the Complainants, the record strongly suggests to the Panel that the Respondent deliberately adopted the disputed domain names in order to trade on the good will and reputation of the Complainant’s marks.
C. Rights or Legitimate Interests
The record reflects that the Complainants have not licensed or otherwise authorized the Respondent to use the Complainants’ marks, in which the Complainants beyond question have established rights through registration and use. There is no indication that the Respondent has been commonly known by the disputed domain names, or that the Respondent is attempting to make any legitimate noncommercial use of the domain names. Instead, the record reflects that the Respondent has used the disputed domain names to divert internet users to a website featuring adult-oriented services that compete with services offered by the Complainants. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use 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 respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has chosen to contest only the Complainant’s charge of “cyberflying”. Under these circumstances, the Panel is inclined to consider the Respondent’s lack of response under Paragraph 4(c) as an admission that the Respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No.�D2000-0624. Having said this, the Panel notes that the ultimate burden of proof on the legitimacy issue rests with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Nevertheless, in the absence of any relevant submission by the Respondent, this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No.�D2000-0009.1
The Respondent makes no claim to have been authorized by the Complainants to use the Complainants’ marks. Similarly, the Respondent makes no claim that it has been commonly known by the disputed domain names, or that it has attempted to make any legitimate noncommercial or fair use of the domain names.
The Respondent, in fact, makes no claim to be using the domain names, but the Panel notes there is some evidence in the record that the Respondent, before any notice to it of this dispute, was using a number of the disputed domain names in connection with the offering of goods or services over the internet. Nevertheless, for purposes of this Paragraph 4(c)(i), the Respondent must have used the domain names in connection with a bona fide offering of goods or services. In determining whether an offering of goods or services is bona fide under Paragraph 4(c)(i), the dispositive question is whether the use of the disputed domain name in connection with the offering otherwise constitutes bad faith registration or use of the domain name under Paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under Paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under Paragraph 4(a)(iii)).
The Panel finds that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”. Under the circumstances of this case, the Panel concludes that the Respondent registered the domain names primarily for the purpose of capitalizing on the trademark or service mark value inherent in the names. See M, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230; Manchester Airport PLC v. Club Club Limited, WIPO Case No. D2000-0638.
Accordingly, the Panel finds that the Complainant has met its burden under paragraph�4(a)(ii).
D. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the domain name in an attempt 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 the Respondent’s website or location or of a product or service on its website or location.
The overriding objective of the Policy is to prevent abusive domain name registration and use for the benefit of legitimate trademark owners, and the Panel notes that the examples of bad faith registration and use set forth in paragraph�4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003.
In this case, the totality of circumstances demonstrates the Respondent’s bad faith registration and use of the disputed domain name under Paragraph�4(a)(iii). The circumstances of this case reflect that the Respondent has engaged in a pattern of conduct of registering multiple domain names in order to prevent the Complainants from reflecting their marks in corresponding domain names, which constitutes bad faith registration under Paragraph 4(b)(ii). See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046 (registration of 15 domain names incorporating complainant’s mark and a series of services, products, geographical descriptors or generic words constitutes pattern of conduct within meaning of Paragraph 4(b)(ii)); British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683 (clear pattern of registering domain names consisting of slightly misspelled trademarks).
The Complainant has submitted evidence of the Respondent’s use of a number of the disputed domain names to divert Internet users to its website, where adult oriented goods and services are advertised. This evidence is unrebutted, and the Panel finds record on balance sufficient to support a finding that the Respondent has intentionally used the disputed domain names in an attempt to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of either the Respondent’s websites or its services. This constitutes bad faith under Paragraph 4(b)(iv).
Even were the Panel to conclude that the Respondent has made no active use of the domain names, the Respondent’s passive holding of the domain names would not preclude a finding of bad faith registration and use under the circumstances of this case. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.�D2000-0003, the Panel concluded that passive holding of a domain name may support a finding of bad faith use where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. The overall circumstances of this case support a finding of bad faith under the test articulated in Telstra.
Finally, and as discussed at some length above, the circumstances of this case also compel a conclusion that the Respondent has engaged in the practice commonly referred to as “cyberflying”. Prior Panels have found such a practice to be clear evidence of a respondent’s bad faith under the Policy. Kirkbi AG v. Company Require / Karlina Konggidinata and P, Inc., WIPO Case No. D2004-0359; Sony Kabushiki Kaisha also trading as Sony Corporation v. Admin www@ +41.227347210promo, WIPO Case No. D2004-1040; British Broadcasting Corporation v. Data Art Corporation / Stoneybrook, WIPO Case No. D2000-0683. This is a conclusion with which this Panel agrees.
7. Decision
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 be transferred to the Complainant Group Kaitu, LLC:
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William R. Towns
Sole Panelist
Date: January�20,�2006
1 Some panel decisions have concluded that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No.�D2000-0403.
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