The First Complainant is Group Kaitu, LLC of Richmond, Virginia, United States of America (“US”) and the Second Complainant is Darkside Productions, Inc. of Richmond, Virginia, US, both represented by Gavin Law Offices, PLC, US.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, US/ lloyd f. gerald, Right Online Investments of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2014. On January 31, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2014, 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 February 13, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 18, 2014
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 February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 19, 2014. 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 First Complainant (Group Kaitu, LLC) is a company established in Delaware, US and the Second Complainant (Darkside Productions, Inc.) is a company established in California, US. The Second Complainant is a licensee and affiliated company of the First Complainant. The Complainants are involved in the provision of adult-themed entertainment services and goods, including the provision of Internet guides to adult entertainers and related goods and services.
The First Complainant owns the trademarks EROS ESCORTS, THE ULTIMATE GUIDE TO EROS ESCORTS, EROS, EROS.COM, EROS GUIDE, EROS-GUIDE.COM, THE EROS GUIDE, WWW.EROS-GUIDE.COM, EROSGUIDE, in the US, the United Kingdom, Benelux and the European Union (the “EROS Trade Marks”). The Second Complainant has been granted a licence by the first Complainant to use the EROS Trade Marks in connection with the operation of various websites. The Complainants also hold the domain names , , , , , and through which they operate websites for the provision of their adult-themed services and goods.
The Respondent registered the Disputed Domain Name on December 6, 2011. The Disputed Domain Name resolves to a website that appears to offer a directory for escort services. 5. Parties’ Contentions A. Complainant
The Complainants’ contentions can be summarized as follows:
(a) The Complainants have been using some of the EROS Trade Marks for over 15 years. The First Complainant has held registered trade mark rights in the EROS Trade Marks since as early as 2002. Due to the Complainants’ extensive use of the EROS Trade Marks and the publicizing of its services, the EROS Trade Marks are well-known.
(b) The Complainants have never authorized the Respondent to use the Complainants' EROS Trade Marks. The Respondent registered the Disputed Domain Name on December 6, 2011, which is well after the Complainants had acquired rights in the EROS Trade Marks and had registered its “Eros” domain names.
(c) The Respondent has not been using the Disputed Domain Name for a bona fide offering of goods or services, as it is using the Complainants’ EROS Trade Marks to misleadingly attract users to its website, which directly competes with the Complainants’ business. This cannot amount to a bona fide offering of goods or services.
(d) There is no evidence to suggest that the Respondent has become commonly known by the Disputed Domain Name.
(e) The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent to misleadingly divert consumers for commercial gain. The Disputed Domain Name currently resolves to a website that provides a directory for escort services in the US, and features links to advertisements that generate revenue for the Respondent, and also uses the Complainant’s EROS Trade Marks.
(f) The Complainant is a well-established and well-known provider of adult entertainment services. The Respondent registered the Disputed Domain Name long after the Complainants had established rights in its EROS Trade Marks. The Respondent operates a website at the Disputed Domain Name which relates to the Complainants’ business. The Disputed Domain Name is identical to the Complainants’ EROS ESCORTS mark and the Respondent uses the Complainants’ EROS ESCORTS mark in at least two places on the website to which the Disputed Domain Name resolves. Therefore, the Respondent knew (or should have known) of the Complainants’ EROS Trade Marks at the time it registered the Disputed Domain Name, and is clearly attempting to create a likelihood of confusion by using the Complainants’ EROS Trade Marks to attract users for commercial gain to the Respondent’s competing website. The Respondent also acted in bad faith by using a privacy service to hide its identity. B. Respondent
The Respondent did not reply to the Complainants’ contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favor of the Complainants. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in the EROS ESCORTS mark, based on their US trade mark registration.
The Disputed Domain Name incorporates the Complainants’ EROS ESCORTS mark in its entirety. It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension, in this case “.org”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ registered marks, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights 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 Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Once a prima facie case is established by the Complainants in respect of the Respondent's lack of rights or legitimate interests in the Disputed Domain Name, the Respondent then carries the burden of proving otherwise, failing which, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainants in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainant’s EROS ESCORTS mark or other EROS Trade Marks. The Panel further accepts that the Respondent has not provided any evidence to demonstrate that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to demonstrate it has rights or legitimate interests to the Disputed Domain Name. However, since no Response was filed by the Respondent, the Panel will determine whether or not the Respondent has any rights or legitimate interests in the Disputed Domain Name based on the reasonable inferences that can be drawn from the Complainants’ evidence and the website to which the Disputed Domain Name resolves (the “Website”).
The Website uses the mark EROS ESCORTS, and is involved in the same industry as, and provides competing services to, the Complainants,i.e. a guide/directory for escorts in the US. The Respondent appears to earn advertising revenue by allowing third parties to post advertisements on the Website. Based on the contents of the Website and the confusing similarity of the Disputed Domain Name to the Complainants’ EROS ESCORTS trade mark, the Panel finds that the Respondent has been using the Disputed Domain Name to misleadingly divert consumers to its Website in order to generate advertising revenue and to directly compete with the Complainants, which cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The Panel accepts the Complainants’ contention that the EROS Trade Marks are well-known mark in multiple countries in respect of the adult industry. Since the Respondent has not submitted a Response to refute any of the Complainants’ contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainants’ evidence.
The Panel accepts that the Respondent likely knew of the Complainants’ EROS Trade Marks at the time it registered the Disputed Domain Name, and has been using it in bad faith, based on the following:
(a) the Respondent registered the Disputed Domain Name in December 2011, more than 9 years after the Complainants had obtained their first registration for the EROS Trade Marks;
(b) the Complainants have been continuously using the EROS Trade Marks for over 15 years with regard to the provision of adult-themed services and goods, including Internet guides for such services. The Website is a guide/directory for escort services in the US, which competes with the Complainants’ business and is aimed at generating advertising revenue.
(c) the Complainants’ EROS ESCORTS trade mark (first registered in the US in 2002) and domain names , , and (registered between 2001 and 2003) are identical to the Disputed Domain Name, save for the gTLD extension; and
(d) the Website uses the mark EROS ESCORTS.
Based on the above, the Panel reasonably believes that the Respondent registered and is using the Disputed Domain Name with the intent of trading on the reputation of the Complainants’ EROS Trade Marks to intentionally attempt to attract Internet users to the Respondent’s Website, by creating a likelihood of confusion with the Complainants’ EROS Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Respondents Website, for commercial gain, i.e. to earn advertising revenue.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 Disputed Domain Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Date: April 2, 2014
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