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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc v. ErosMontrealGuide

Case No. D2005-0175

 

1. The Parties

The Complainants are Group Kaitu, LLC, a Delaware limited liability company, and Darkside Productions, Inc., a California corporation, each with a place of business in Oakland, California, United States of America. Complainants are represented by Gavin Law Offices, PLC, United States of America.

The Respondent is ErosMontrealGuide, with addresses in “Washington, Washington” United States of America.

 

2. The Domain Names and Registrar

The disputed domain names, <eros-montreal.com> and <erosmontreal.com>, are registered with NameScout Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2005. On February 15, 2005, the Center transmitted by email to NameScout Corp. a request for registrar verification in connection with the domain names at issue. On February 16, 2005, the Center received from NameScout Corp. a verification confirming that Respondent is listed as the registrant for the domain names, indicating that it had “locked” the domain name, confirming several details of the registration agreements and providing the contact details for the administrative, billing, and technical contacts for the domain names.

In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 16, 2005.

The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). In accordance with Rules 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 18, 2005. On February 21, 2005, the Center received e-mail notifications that its e-mail transmissions had failed to all but one of the e-mail addresses for the various contacts for the domain name. In addition, it appears that the couriers used by the Center were unable to deliver the hard copy of the materials.

In accordance with paragraph 5(a), the Response was due 20 calendar days later. No response was received from Respondent by the March 10, 2005, deadline. On March 11, 2005, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default.

The Center appointed Debra J. Stanek as the sole panelist in this matter on March 17, 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 Rule 7.

 

4. Factual Background

Complainant Group Kaitu owns several United States federal trademark registrations for “eros” marks, including EROS GUIDE and EROS, the earliest of which issued in 2002, for, among other things, disseminating goods and services of others via the Internet and for serving as an online portal for adult services and entertainment. According to Complainants, the EROS marks have been in use since 1997, when Complainant Darkside Productions registered and began using the <eros-guide.com> and <erosguide.com> domain names. In addition, Complainants¹ have registered and use numerous “eros” domain names, consisting of the EROS mark plus a geographic identifier.

According to Complainants, Respondent registered the domain names <eros-montreal.com> and <erosmontreal.com> in January 2004. The domain names link to other sites, which offer services that are similar to and compete with Complainant Darkside’s adult-oriented services.

 

5. Parties’ Contentions

A. Complainants

The Complainants make the following contentions:

The disputed domain names are confusingly similar to Complainants’ EROS marks except that the domain names include geographic references to the city of Montreal. Further, Respondent’s domain names redirect visitors to sites that offer services that are identical to and compete directly with those offered by Complainants.

Complainants contend that Respondent has copied both their method of expansion into other markets and the pattern of information supplied on their WHOIS records.

Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainants have not granted Respondent any rights to the EROS marks. Respondent’s registration of the disputed domain names is not in connection with a bona fide offering of goods or services; Respondent is not generally known by any of the disputed domain names and is not making a legitimate non-commercial or fair use of such names. Rather, Respondent uses the domain names to divert Internet users to its own adult services websites that are competitive with Complainants’ websites.

Complainants contend that Respondent registered the disputed domain names in order to disrupt the business of a competitor by attracting visitors through use of Complainants’ EROS mark, then redirecting them to sites that offer competing services. In addition, Respondent’s use of “obviously false” WHOIS information and pattern of registering domain names similar to Complainants registrations indicates Respondent’s awareness of Complainants’ rights.

B. Respondent

As noted above, Respondent has not responded to the Complainants’ contentions.

 

6. Discussion and Findings

A. Procedural Matters

(1) Multiple Complainants

The Complaint identifies two Complainants, Group Kaitu and Darkside Productions. Complainant Group Kaitu is the owner of the cited federal trademark registrations, while Complainant Darkside Productions is Group Kaitu’s licensee. According to the Complaint, these entities are related, although the nature of the relationship is not provided. The Complaint requests that the domain names be transferred to Complainant Group Kaitu.

Neither the Policy nor the Rules provide for multiple Complainants. However, in some cases, panels have determined that an identified complainant did not demonstrate the requisite ownership or control of the mark at issue. In other cases, panels have determined that a complainant was properly acting on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint. In this case, the Panel accepts the designation of both entities as Complainants.

B. Burden of Proof

In order to prevail, the Complainants must prove:

(i) The <eros-montreal.com> and <erosmontreal.com> domain names are identical or confusingly similar to Complainants’ marks.

(ii) Respondents have no rights or legitimate interests in the <eros-montreal.com> and <erosmontreal.com> domain names.

(iii) The domain names have been registered and are being used in bad faith.

Policy paragraph 4(a) sets out four sets of circumstances that may evidence a respondent’s bad faith registration and use under paragraph 4a(iii), see Policy paragraph 4(b), as well as examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy paragraph 4(c).

Even if a respondent has not answered the Complaint, a default does not automatically result in a finding for the complainant. Rather, the complainant continues to have the burden of establishing that it is entitled to relief. The Panel may, however, draw such inferences from a respondent’s default as it considers appropriate. See paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Panel finds Complainants’ attempt to show that the <eros-montreal.com> and <erosmontreal.com> domain names are identical or confusingly similar to marks in which Complainants’ have rights confusing. Complainants rely on the federal trademark registrations owned by Group Kaitu for EROS and EROS GUIDE. In addition, the Complaint alleges that “Complainant” is both the “registrant” and “user” of numerous domain names featuring the EROS mark plus a geographic identifier, citing “Complainant domains” listed in an Annex to the Complaint. That list includes the <montrealeros.ca> and <montreal-eros.ca> domain names. However, neither of those names is registered to the named Complainants. According to the “whois” information, the registrant is Group Kaitu (Canada) Inc., presumably an affiliate of Complainant Group Kaitu, LLC. The Panel assumes, however, that while the allegation concerning identity of the registrant is wrong, the allegation regarding use of the domain names is accurate. The Panel accepts that one or both of the Complainants have acquired common law rights in the mark MONTREAL-EROS.

The disputed domain names simply reverse the two elements of the MONTREAL-EROS mark, in one case with a hyphen and in the other without a hyphen. The Panel concludes that the disputed domain names are confusingly similar to one or more marks in which the Complainants have rights.

B. Rights or Legitimate Interests

Establishing that Respondents have no rights or legitimate interests in the domain names -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent’s knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant’s evidence. These approaches are consistent with the general structure of the Rules. Rule 3(b)(ix)(2) requires a complainant to show why the respondent “should be considered” as having no rights or interests in the domain name (not why the respondent has no rights or interests in the name), while paragraph 5(b) requires the respondent to “[r]espond specifically to the statements and allegations” of the complaint (emphasis added).

The Panel concludes that Complainants have met their burden of proof on this element.

First, Complainants assert that the disputed domain name is not Respondent’s legal name and is not commonly used to identify Respondent. Complainants have not provided any evidence of trademark searches, other investigations, or any facts that actually support this conclusory assertion. Such evidence might have included results of searches of federal and state trademark databases for “eros” marks owned by Respondent or other searches of state and local business listings. In fact, the only evidence submitted by Complainants -- the “whois” printout for the domain names -- actually identifies Respondent as “ErosMontrealGuide.” However, where, as here, the registrations contain other false information², the Panel does not give the use of the name in the registration any weight.

Second, it does not appear that Respondent was making a bona fide use of the domain names before notice of the dispute. The printout supplied by Complainants show that visitors to the disputed domain names are simply redirected to another site. The printout of the page to which visitors are redirected does not reveal any connection to the disputed domain names. As noted above, the disputed domain names are confusingly similar to the MONTREAL-EROS mark.

Third, for the same reasons, it does not appear that Respondent is making a legitimate non-commercial or fair use of the domain names. Again, the printout of the page to which visitors are redirected shows that visitors are offered services that compete with those offered by Complainant Darkside Productions.

Where, as here, Complainants’ MONTREAL-EROS marks appear to be well-known, there are doubts as to the accuracy of the registration information identifying Respondent’s name as “ErosMontrealGuide,” Respondent uses the website to direct visitors to another site that offers competing services, Complainants have not authorized Respondent’s use, and Respondent has failed to respond, Complainants have met their burden.

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Complainants have established that Respondent has registered and used the domain name in bad faith by showing that Respondent uses the domain name to intentionally try to attract, for commercial gain, visitors to Respondent’s site, by creating a likelihood of confusion with the MONTREAL-EROS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s site or the goods and services on Respondent’s site. See Policy, paragraph 4(b)(iv).

As noted above, Respondent’s domain name is confusingly similar to the MONTREAL-EROS mark. It is therefore reasonable to conclude that Respondent’s site attracts visitors who are actually seeking Complainant Darkside Production’s site. Those visitors are then redirected to a site that sells similar adult services in competition with Complainant Darkside Production.

Under these circumstances, the Panel finds that Respondent has registered and used the domain name in bad faith.

 

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain names, <eros-montreal.com> and <erosmontreal.com>, be transferred to Complainant, Group Kaitu.

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Dated: April 4, 2005

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¹ The Complaint’s allegations do not distinguish between the two named Complainants, using the singular term “Complainant” to variously refer to either or both entities. The Panel uses the term “Complainants” in the plural to summarize the Complaint’s contentions.

² For example, the registrant’s city and state are “Washington, Washington” with a zip code for Morristown, South Dakota and registrant’s telephone numbers use a San Francisco-area area code and a fictitious “555” prefix. The information for the administrative and technical contacts contains slightly different, but comparable inconsistencies. It would have been helpful to the Panel had Complainants actually identified these inconsistencies rather than simply asserting that the registrations contained “obviously false” information.