The Complainants are Group Kaitu, LLC and Darkside Productions, Inc. of Richmond, Virginia, United States of America (hereinafter, “the Complainant”), represented by Gavin Law Offices, PLC, United States of America.
The Respondent is Jerry Lytell of Miami Beach, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Centerthe (“Center”) on March 7, 2011. On March 7, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On March 7, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2011.
The Center appointed William F. Hamilton as the sole panelist in this matter on April 19, 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
The Complainant is the owner of EROS family of United States registered marks that includes EROS GUIDE, THE EROS GUIDE, WWW.EROS-GUIDE.COM, EROS, EROS.COM, and EROS ESCORTS. Since 1997, the Complainant has been the owner and operator of the websites located at “” and “”. Additionally, the Complainant owns and operates websites at “”,””,””, and other similarly named and related websites featuring adult themed entertainment services. The Complainant owns approximately 2,778 domain names which are comprised of the EROS, EROS GUIDE and EROS ESCORTS marks.
The Respondent registered the disputed domain name on September 2, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s service marks because the disputed domain name fully incorporates the Complainant’s EROS GUIDE and EROS ESCORTS marks. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never licensed the Respondent to use any of the Complainant’s EROS related marks, and to the knowledge of the Complainant, the Respondent has never conducted business under, nor been known by, the disputed domain name prior to the registration of the disputed domain name by the Respondent in 2010. The Complainant asserts that the disputed domain name was registered in bad faith to divert unsuspecting Internet users to the Respondent’s website that offers adult themed services in competition with the Complainant. The Complainant asserts the wholesale adoption of the EROS GUIDE and EROS ESCORT marks into the disputed domain name by the Respondent is not an innocent coincidence. The Complaint asserts that the Complainant’s presence on the Internet is such that any elementary search would have disclosed to the Respondent the Complainant’s websites and registered marks. According to the Complainant, the Respondent’s bad faith is further demonstrated by the Respondent’s use of false contact information when registering the disputed domain name and by the Respondent failing to respond to the Complainant’s demand to cease and desist the use of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
i) The respondent’s domain name 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 respondent’s domain name has been registered and is being used in bad faith A. Identical or Confusingly Similar
The Panel has no difficulty determining that the disputed domain name is confusingly similar to the Complainant’s marks. The disputed domain name is composed of the Complainant’s EROS GUIDE and EROS ESCORTS marks. The juxtaposition of the words “guide” and “escorts” does nothing to diminish the likelihood of confusion. Group Kaitu, LLC and Darkside Productions v. M E Board/David Archuleta,WIPO Case No. D2006-0637; Darkside Productions, Inc and Group Kaitu LLC v. Practical Growth, Inc.WIPO Case No. D2007-1755; Group Kaitu LLC v. Sunlane Media LLC,WIPO Case No. D2008-1831. The Complainant has met its burden under Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has affirmatively asserted that the Complainant has neither licensed nor otherwise granted the Respondent any right to use and exploit the Complainant’s marks or the disputed domain name. Further, it is not apparent to the Panel that the Respondent has conducted any bona fide business under the disputed domain name. The burden of production thus shifts to the Respondent to come forward and demonstrate some rights or legitimate interests in the disputed domain name. The Respondent has failed to attempt to make such a showing. The Respondent has failed to demonstrate any bona fide offering of services under the disputed domain name, that the Respondent was commonly known by the disputed domain name prior to registering the disputed domain name, or that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name. Rada Mfg., Co. v. J. Mark Press a/k/a J. Mark Cutlery,WIPO Case No. D2004-1060. The Respondent clearly seeks commercial gain from use of the disputed domain name. Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie BrownBrown, WIPO Case. No. D2001-0919. Accordingly, the Panel determines that the Complainant has made out a prima facie case and the Complainant has met its burden under paragraph 4(a)(ii) of the Policy and that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant’s EROS family of marks is well established in the adult-themed entertainment industry. Even a cursory Internet search would have revealed the Complainant’s marks and websites. It is difficult to believe that the Respondent was unaware of the Complainant’s marks and websites offering competitive adult themed services when registering the disputed domain name. Any start-up business would survey the competitive landscape. Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448. The Respondent has combined the Complainant’s EROS GUIDE and the EROS ESCORTS in an unusual manner to form the disputed domain name to confuse Internet users looking for services offered by either EROS GUIDE or EROS ESCORTS. There is no plausible explanation as why the Respondent selected the disputed domain name in light of the Complainant’s federally registered EROS family of marks, except for the purpose of trading on the goodwill of the Complainant associated with the EROS family of marks. Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556. The Panel also notes that the contact information provided by the Respondent when registering the disputed domain name was faulty and that the Respondent has failed to reply to the Complainant’s cease and desist letter or the actual Complaint in this proceeding. TDS Telecommunications Corporation v. Registrant[20758] Nevis Domains and [Registrant 117460]Moniker Privacy Services,WIPO Case No. D2006-1620. Considering all the above circumstances, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith and that the Complainant has met the requirements of 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 be transferred to the Complainant Group Kaitu, LLC as requested in the Complaint.
William F. Hamilton
Sole Panelist
Dated: May 3, 2011
Full & Egal Universal Law Academy