The Complainant is Kuil Ltd. of Nicosia, Cyprus, represented by Walters Law Group, United States of America ("United States").
The Respondent is Michael O'Brian of San Francisco, California, United States. 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 July 18, 2017. On July 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 19, 2017, 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 email communications to the Complainant on July 20, 2017 notifying of a formal deficiency in the Complaint, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended to the Complaint. The Center received an email communication from a third party on July 20, 2017. In response to the notifications by the Center, the Complainant filed an amended Complaint on July 21, 2017.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment on August 18, 2017.
The Center appointed John Swinson as the sole panelist in this matter on August 29, 2017. 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 Kuil Ltd, a company incorporated in Cyprus. The Complainant operates an online business which involves creating an online community for consumers and adult service providers and publishing advertisements for dancers, massage therapists, and escorts.
The Complainant owns numerous registered trade marks, including United States registered trade mark number 2794843 for EROS (the "Trade Mark") which was registered on December 16, 2003. The Trade Mark was previously owned by various entities, including Indigo Netherlands B.V. and Group Kaitu, LLC (the "Complainant's Predecessors") and eventually was assigned to the Complainant.
The Complainant owns a domain name which incorporates the Trade Mark, being , at which it provides its services (the "Complainant's Website"). The domain name for the Complainant's Website was registered on October 18, 1994. However, the Complainant only claims to have been using the Trade Mark since 1997.
The Respondent is Michael O'Brian, an individual of United States and the registered owner of the Disputed Domain Name. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on June 27, 2017.
According to the Complaint, at the time the Complaint was filed, the website associated with the Disputed Domain Name featured the Trade Mark in the header and offered an online escort advertising directory, which are similar services to those provided by the Complainant.
At the time of this decision, the Disputed Domain Name points to a website comprising of blog entries. The latest blog entry dated August 5, 2017 refers to the Complainant's actions against the Respondent including in relation to the Disputed Domain Name and appears to have been posted by the Respondent.
The Complainant sent a cease and desist letter to the Respondent concerning the Disputed Domain Name on July 7, 2017. According to the Complaint, the Respondent did not reply to the letter. 5. Parties' Contentions A. Complainant
The Complainant makes the following submissions. Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark.
The Complainant has registered rights in the Trade Mark, which is wholly incorporated into the Disputed Domain Name. The addition of the new generic Top-Level Domain ("gTLD") ".vision" in the Disputed Domain Name is not a distinguishing feature and fails to eliminate confusing similarity between the Trade Mark and the Disputed Domain Name. Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is not a licensee of the Complainant and is not otherwise authorised to use the Trade Mark.
The registration and use of the Disputed Domain Name occurred after registration of the Trade Mark. "EROS" is an arbitrary term that the Complainant uses as a trade mark to identify the source of the Complainant's services. The Respondent is not commonly known as "eros" and has no connection to the word "eros". The Disputed Domain Name is not the nickname of the Respondent and is not in any other way identified with or related to any legitimate interest of the Respondent.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, but is using the Disputed Domain Name to misleadingly divert Internet users to the website associated with the Disputed Domain Name or to disparage the Trade Mark. The Respondent presumably uses the Disputed Domain Name for its commercial benefit and has claimed to have generated over USD 3 million in sales through the Respondent's Initial Coin Offering ("ICO") of a new crypto currency called "eros" or "ERS".
Further, the close proximity between the goods and services offered by the Complainant and the Respondent indicates that the Respondent is taking advantage of the similarity between the Trade Mark and the Disputed Domain Name, and is doing so for commercial gain (see SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L.,WIPO Case No. D2008-0792).
The Respondent's failure to reply to the Complainant's cease and desist letter provides additional evidence that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Registered and Used in Bad Faith
The Respondent has acted in bad faith by registering and using the Disputed Domain Name which is confusingly similar to the Trade Mark to directly compete with and tarnish the Complainant's lawful adult‑themed service provider business.
There is no plausible circumstance under which the Respondent legitimately registered or used the Disputed Domain Name. The Trade Mark is well-known, with a substantial and widespread reputation throughout the world. The considerable value and goodwill of the Trade Mark could not have been unknown to the Respondent when the Disputed Domain Name was registered.
The Respondent knowingly registered the Disputed Domain Name with the bad faith intent to capitalise on consumer recognition of the Trade Mark and profit from the Complainant's established rights in the Trade Mark. The Respondent is using the Disputed Domain Name to misdirect Internet users to its own website which offers services substantially similar to, and in direct competition with, the Complainant. Further, the Trade Mark, as it is applied to the relevant services of the Complainant, is unique and arbitrary such that it is unlikely that the Respondent devised the Disputed Domain Name on its own.
In violation of United States law, the Respondent has created a forum for advertisements from escorts who provide sex for money which exacerbates the level of bad faith displayed by the Respondent, and the damage to the Complainant's established rights in the Trade Mark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has 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 in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent's failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel is satisfied that the Complainant has rights in "EROS" by virtue of its ownership and use of the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name.
In this case, the gTLD ".vision" is immaterial in assessing confusing similarity under the Policy and may be ignored.
In light of the above, the Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel accepts the Complainant's submission that the Respondent is not a licensee or otherwise authorised by the Complainant to use the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of services. At the time the Complaint was filed, the website associated with the Disputed Domain Name offered similar services to those provided by the Complainant at the Complainant's Website. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. At the time the Complaint was filed, the Disputed Domain Name resolved to a website that used the Trade Mark and offered similar services to the Complainant's services, presumably for commercial gain.
The Panel considers that the Trade Mark may be suggestive of the services provided at the Complainant's Website, especially in relation to adult-themed services, as "eros" is an Ancient Greek term for "love" and is the etymological origin of the term "erotic". In the Panel's view, the Respondent possibly could have a claim to legitimate rights to an "eros-themed" term; however, in these circumstances, where the Complainant is relying on registered rights in the Trade Mark spanning approximately 20 years and in the absence of a Response advancing a legitimate purpose, the Panel finds in favour of the Complainant.
The Respondent had the opportunity to advance a claim to rights or legitimate interests, but did not do so. It is clear from the content of the blog entry dated August 5, 2017 currently at the website at the Disputed Domain Name that the Respondent was aware of the Complaint and strongly disagrees with the Complainant's contentions, however he still did not file a Response. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and used the Disputed Domain Name in bad faith.
According to the Complaint, the Complainant and the Complainant's Predecessors have been using the Trade Mark since at least August 24, 1997. The Complainant has provided evidence of its registered rights in the Trade Mark from December 16, 2016.
The Disputed Domain Name was registered on June 27, 2017.
The Panel finds that the Respondent sought to take advantage of the reputation of the Complainant's business and the Trade Mark, and registered the Disputed Domain Name because of this reputation. The Panel reasonably considers that the likely effect of the Respondent's registration and previous use of the Disputed Domain Name was to attract Internet users to its website for commercial gain. This is evidence of bad faith registration and use (see paragraph 4(b)(iv) of the Policy).
Further, according to the Complaint, the use of the website at the Disputed Domain Name relates to unlawful activity as it expressly promotes the exchange of sex for money. It is not the Panel's role to consider the legality of the website at the Disputed Domain Name.
In these circumstances, the registration of the Disputed Domain Name using a privacy service and failure to file a Response also supports a finding of bad faith (see, e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyP, Domain Admin, ID # 10760,WIPO Case No. D2012-0924 and cases cited therein).
In light of the above, and noting the Respondent's failure to provide evidence to the contrary or even advance a claim, the Panel finds that the Complainant has succeeded on the third element 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 Disputed Domain Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: September 13, 2017
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