WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Group Kaitu, LLC, Darkside Productions, Inc. v. SMG Case No. D2008-1830 1. The Parties
Complainants are Group Kaitu, LLC (“Kaitu”) Richmond, Virginia, United States of America; Darkside Productions, Inc. (“Darkside”), Broadway, Oakland, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.
Respondent is SMG, New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
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 GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 1, 2008, GoD, 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 December 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2008. On December 21, 2008, the Center received an informal email communication from Respondent stating that he was “responding to a domain Dispute by ‘eros-guide:' Dardside Production ….[and] would like to know what are my options before this reaches the Administrative panel. I set preperation for for a new domain”. In the email the Respondent also provided an email address through which he can be contacted.
The Center in acknowledging receipt of the email communication advised that the Response was due on December 22, 2008 and that if no Response is sent by the above date, the Respondent will be considered to be in default and that the Center would proceed to appoint an Administrative Panel. The Center also informed the Respondent that in the event that the Respondent wished to negotiate settlement of the proceedings, the Respondent could contact the Complainant and further that if no further communications or formal Response is received by the due date for Response, the Center shall forward the above-referenced communication to the Panel for consideration on appointment.
The Respondent did not submit any Response. Accordingly, on December 23, 3008, the Center informed the Respondent that it shall proceed with the appointment of an administrative Panel since the due date for filing of a Response had lapsed, and that the consideration or otherwise of any late submission of Response shall be left to the discretion of the Panel (on appointment).
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 13, 2009. 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 are related entities. By written agreement Complainant Kaitu owns all Complainants' service marks and domain names asserted in the Complaint and licenses them to Complainant Darkside for use in connection with the operation of various websites.
Complainant Kaitu is the owner of several United States Service Mark Registrations for marks including the term “EROS” used in the field of adult entertainment, publications and online shopping services of adult themed products and registered since 2002.
Since prior to the registration of the disputed domain name, Complainant Darkside has owned and operated websites located at and and . Complainant Kaitu owns over 2,800 domain names, the vast majority of which combine the EROS mark with another reference such as a city or state name.
Respondent registered the disputed domain name on September 5, 2006.
The disputed domain name directs users to a website which offers services that compete directly with those offered by Complainants under the EROS mark. 5. Parties' Contentions A. Complainant
Complainants contend that the disputed domain name is confusingly similar to their registered EROS mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion And Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 in respect of the domain name; and
(iii) the domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a Complaint “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
Complainants have demonstrated that they own rights in the trademark EROS. The disputed domain name incorporates Complainants' trademark in its entirety, with the addition of the words “cityonline”. By adding the term “city” Respondent mimics the pattern of geographic domain names instituted by Complainants (such as, for example, Complainants' domain name). See also Darkside Productions, Inc. et al. v. Joe Peterson, WIPO Case No. D2008-0955 (finding that contained no distinctive content to distinguish it from Complainants' EROS trademark). The generic term “online” is not distinctive and does nothing here to distinguish Respondent's domain name. See also Darkside Productions, Inc. et al v. Whois Guard Protected, WIPO Case No. D2008-0263 (finding that > is confusingly similar to one or more of Complainants' EROS marks).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainants' trademark. B. Rights or Legitimate Interests
Complainants' use of and registrations for the EROS mark predate Respondent's registration of the disputed domain name by several years. Complainants' and domain names were registered in 1997 and in use prior to the date of Respondent's registration of the disputed domain name.
Respondent is not a franchisee, affiliated business or licensee of Complainants. Complainants have not authorized Respondent to use Complainants' marks.
Respondent is not and has not been commonly known by the disputed domain name. Respondent appears to be operating a website at the disputed domain name, from which Respondent derives advertising revenue from the “models” featured on the website and/or from the users of, or advertisers on the site. Respondent is using the domain name to offer services which compete directly with and/or divert traffic from Complainants' sites for its own commercial gain. Such use of the domain name does not constitute a bona fide, legitimate noncommercial use of the domain name.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that 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 the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's 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 Respondent's website or location of a product or service on Respondent's website or location.
In light of Complainants' long term use of its EROS trademarks and domain names incorporating the mark EROS, it is reasonable to infer that Respondent registered and is using the disputed domain with the specific intent of trading off the goodwill established by Complainants in their registered service marks and domain names. It is apparent that Respondent is using the disputed domain name for the purpose of intentionally attracting for commercial gain Internet users to Respondent's website by creating confusion as to source, sponsorship, affiliation or endorsement by Complainants of Respondent's website. Such use evidences Respondent's bad faith.
The Panel finds that Respondent has registered and used the domain name in bad faith. 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 domain name, be transferred to the Complainant Group Kaitu LLC.
Lynda J. Zadra-Symes
Sole Panelist
Dated: January 27, 2009
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