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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions v. M E Board/David Archuleta

Case No. D2006-0637

 

1. The Parties

Complainants are Group Kaitu, LLC and Darkside Productions, Inc., Oakland, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.

Respondent is M E Board/David Archuleta, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <eros-wireless.com> is registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 24, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name at issue. On May 25, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2006. Respondent sent an email “Response” to the Center on June 27, 2006. However, Respondent did not “Respond specifically to the statements and allegations contained in the Complaint . . .” as required by paragraph 5(b)(i) of the Rules or certify that the statements in the response were accurate as required by paragraph 5(b)(viii) of the Rules.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on July 10, 2006. 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.

On July 11, 2006, Complainants made a Supplemental filing which was forwarded to the Panel on July 12, 2006. The Panel has sole discretion whether to consider the Supplemental filing. There was no need for the Panel to consider Complainants’ Supplemental filing as the evidence is sufficient to make a determination without it.

 

4. Factual Background

Complainant Group Kaitu owns the following United States service mark registrations and applications:

EROS GUIDE, Registration No. 2,549,369, registered March 19, 2002, with an alleged date of first use in commerce of August 1997, for dissemination of advertising for the goods and services of others via the global computer network;

EROS, Registration No. 2,793,831, registered December 16, 2003, with an alleged date of first use in commerce of 8/24/97, for providing links to the web sites of others in the field of adult-themed entertainment;

EROS, Registration No. 2,794,843, registered December 16, 2003, with an alleged date of first use in commerce of 11/16/02 for providing dissemination of advertising for the goods and services of others via the global computer network; providing online database, directory; and search engine services to facilitate access to adult themed products and services via the global computer network; providing online shopping service featuring the retail and wholesale distribution of adult themed products and services via the global computer network;

EROS, Ser. No. 78/189252, filed November 26, 2002, based on an intent to use the mark in commerce, for organizing and conducting exhibitions and trade fairs for commercial purposes in the fields of style, fashion, music, dance, health, film, food and drink, sex, beauty, and alternative life-styles; and

EROS GUIDE, Ser. No. 78/189244, filed November 26, 2002, based on an intent to use the mark in commerce for publications, namely books and magazines with subject matter related to adult entertainment, alternative life-styles, and other adult-themed topics.

Respondent registered <eros-wireless.com> on June 23, 2005.

 

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainants contend that:

Complainant Group Kaitu owns the following United States service mark registrations and applications the details of which are provided in the Factual Background section of this Decision:

EROS GUIDE, Registration No. 2,549,369;

EROS, Registration No. 2,793,831;

EROS, Registration No. 2,794,843;

EROS, Ser. No. 78/189252; and

EROS GUIDE, Ser. No. 78/189244

The Complaint states that Darkside Productions and Group Kaitua are related entities, by written agreement, and that Group Kaitu owns all Complainants’ service marks and domain names claimed in the Complaint and licenses them to Darkside Productions for use in connection with the operation at various websites.

Since 1997, Complainant Darkside Productions has owned and operated the web sites located at <erosguide.com> and <eros-guide.com> where an Internet guide to adult escorts and entertainers worldwide is operated. Complainant also owns and operates a similar site at <eros.com>.

Since 1997, Complainant Darkside Productions has expanded its product and service offerings under the EROS brand to include the online sale of various adult-themed products such as lingerie, videos, toys, contraceptives, herbal supplements, and gag gifts, all as evidenced by its U.S. Federal Registration No. 2,794,843 for EROS (Registration No. 2,794,843) (filed December 9, 2002 and registered December 16, 2003) for, among other things, providing online shopping service featuring the retail and wholesale distribution of adult themed products and services via the global computer network. Through its various EROS and EROS GUIDE websites, Complainant Darkside Productions now also offers an online magazine, online adult classified advertisements, and an online adult superstore selling various products

Complainant registered the <eros-guide.com> and <erosguide.com> domain names on April 22, 1997 and April 29, 1997, respectively, and has continuously operated from them. Complainant Darkside, under license from Complainant Group Kaitu, has also continually operated a multitude of websites located at URL’s which prominently feature the EROS mark, and which feature Internet guides to adult entertainers and female escorts, as well as other adult-themed products and services.

The EROS GUIDE and EROS marks are internationally known marks in the field of providing Internet guides or directories of adult entertainers and related adult themed goods and services. Further, Complainant has invested millions of dollars publicizing and using Complainant’s marks to ensure its automatic identification with excellence in providing Internet guides of adult entertainers and related goods and services.

On or about July 25, 2005, Complainant became aware of the website owned by Respondent and located at <eros-wireless.com>. The website contains links to escort services providers located in various cities in the United States. Complainant owns and operates a multitude of EROS websites which feature an Internet guide to female escorts located in different geographic markets. Respondent’s website offers services that compete directly with those offered by Complainant.

The only difference between Respondent’s Domain Name <eros-wireless.com> and Complainant’s EROS mark consists of the addition of the generic term “wireless” to the EROS mark.

Consumers familiar with the popularity of Complainant’s marks and services would be likely to believe that the domain name <eros-wireless.com> is owned by Complainant, particularly given the competing services offered thereunder. Thus, Respondent’s registered Domain Name is confusingly similar to Complainant’s marks in which Complainant has rights.

With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:

Complainant has never granted Respondent any rights to any of Complainant’s marks, or any derivatives thereof. Respondent registered its domain name well after Complainant acquired rights in Complainant’s marks. Respondent registered <eros-wireless.com> on June 23, 2005.

On July 26, 2005, Complainant sent a cease and desist letter to Respondent alleging that Respondent’s use of Respondent’s Domain Name violated Complainant’s’ rights, (including using Complainant’s copyright protected photographs on the site) and demanding that Respondent’s Domain Name be transferred to Complainant.

On or about August 11, 2005, Complainant’s counsel noted that the website located at <eros-wireless.com> was placed in “under construction” status and the infringing content had been removed at that time.

On April 6, 2006 and thereafter, Respondent again began offering services using content on the site located at <eros-wireless.com> that competes with Complainant’s services. On April 6, 2006, Complainant, through counsel, sent a second demand letter to Respondent. The site has stated since that time, “Welcome to the Mobile eBoard!” and features three links. Each such link offers the user the opportunity to click through to sites offering escort services, adult-themed videos, adult-themed ring tones, and adult themed photos. Each link clicks the user through to various websites that mention ME Board in the content and/or URL.

Respondent failed to respond to Complainant’s initial and subsequent demand letters. Letters sent via United States Postal Service certified, return receipt were returned to Complainant as undeliverable. Respondent provided false contact information to the registrar with which the domain names are registered. Complainant found an alternative address for Respondent on Respondent’s website located at “www.meboard.com”, provided for advertisers in order to send payments to Respondent.

Respondent’s opportunistic registration of a derivative of Complainant’s marks is not in connection with a bona fide offering of goods or services pursuant to the Policy, paragraph 4(c)(i). Respondent was using and continues to use the Domain Name as a link to its own websites which compete with Complainant’s sites. Respondent’s registration and use of the Domain Name for a website directly competing with Complainant’s services does not constitute a bona fide offering of goods pursuant to the Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to the Policy, paragraph 4(c)(iii). Respondent is not generally known by the name “eros-wireless.com”. Respondent does not use the name “eros-wireless.com” as the name of its service, nor does the name appear on Respondent’s home page. Respondent uses the name “ME Board.com” instead. There is no evidence that Respondent has been commonly known by the Domain Name as required under the Policy, paragraph 4(c)(ii). For the foregoing reasons, Respondent does not have any rights or legitimate interests in the Domain Name.

With respect to paragraph 4(a)(iii) of the Policy, Complainant contends that:

Paragraph 4(b)(i) of the Policy requires the Complainant to show that the Domain Name has been registered and used in bad faith. Respondent clearly knew of Complainant at the time that Respondent used pictures posted on Complainant’s site and placed Complainant’s copyright protected photographs on Respondent’s site. Respondent clearly knew of Complainants’ mark at the time of registration. Respondent registered and uses the Domain Name to intentionally attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant and its EROS mark as to the source, sponsorship, and/or affiliation with Respondent’s websites and the competing services offered on Respondent’s website. Respondent must have registered the Domain Name with Complainant’s trademark in mind in an effort to benefit from the goodwill of the mark and attract and divert customers interested in Complainant’s competing online escort and adult-entertainment services. Respondent offers competing commercial services, and, on information and belief, collects a fee or advertising revenues for these services. Internet users who enter the disputed Domain Name <eros-wireless.com> into their browser are diverted to “MEBoard.com”. Under these circumstances it seems that Respondent has registered and used the Domain Name <eros-wireless.com> to take advantage of the recognition that Complainant has created for its mark EROS and therefore profit by diverting users to its site in violation of the Policy, paragraph 4(b)(iv). Respondent’s bad faith is further demonstrated by the false contact information it provided to the registrar with which the domain names are registered.

B. Respondent

Respondent states (without the certification required by paragraph 5(viii) of the Rules) that:

1. The term wireless is not generic. Wireless is indicative of cell phone applications. eros-wireless was developed using WAP (wireless application protocol) servers and uses WAP programming. None of the Complainant’s sites will load on a cell phone browser.

2. Respondent is the first site optimized for the adult entertainers to advertise on cell phone web sites. The first 6 months of listing are to be free of charge. The Respondent does not expect to begin receiving payments until September 2006. The Respondent is in a start up phase of a legitimate business. All of the adult advertisers have shown positive response to this startup concept for this industry.

3. Respondent intends to continue using <eros-wireless.com> as its main site once the Domain Name dispute has been settled. After receiving threatening letters from Complainant, Respondent moved the files from <eros-wireless.com> to <meboard.com> due to the aggressive statements made by Complainant. Respondent states it is not infringing on any copyrighted material on any of the eros sites. Complainant asserts that the photographs on the site are copyrighted and threaten legal actions. Complainant has a link explaining they do not own or have copyrights to any of the material provided by the adult entertainers on their site. The advertisers on Respondent’s site have given permission for use.

No other arguments or contentions have been advanced by Respondent.

 

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name at issue is confusingly similar to a trademark or service mark in which Complainant has rights.

The Panel finds that Complainant has trademark rights in the mark EROS due to its United States service mark registration Nos. 2,549,369; 2,793,831; and 2,794,843 and its long established use of the mark for adult themed goods and services, including escort services, since 1997.

The domain name <eros-wireless.com> is likely to be confused with Complainant’s EROS service marks.

The addition of the word “wireless” does not eliminate the confusion. The mere addition of a generic or descriptive term is not sufficient to avoid confusion. Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. (The fact that the word “autoparts” is added to Complainant’s trademark does not eliminate the identity, or at least the similarity, between Complainant’s trademark and the disputed domain name, as “autoparts” is a descriptive component of the disputed domain name.) See also, Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115 (February 3, 2003) (addition of generic words “healthcare” to form <bayerhealthcare.com> domain name deemed “confusingly similar to the BAYER trademark”); Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037 (March 9, 2005) (addition of “ordinary descriptive” term “buy” to mark LANTUS in domain <buylantus.com> “does nothing to dispel and serves only to reinforce the connection in the public mind between the word LANTUS and the Complainants, and therefore increases the risk of confusion”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (Oct. 28, 2003) (finding domains such as <pepsibasketball.com>, <pepsigames.com>, <pepsihockey.com>, and <pepsisoccer.com> confusingly similar to plaintiff’s PEPSI mark; stating that “[t]hat the mere addition of common terms such as ‘sports,’ ‘basketball’ or ‘soccer’ to the PEPSI mark is of no import”).

Respondent contends that Complainant does not offer wireless access. This is irrelevant. Confusion is still likely because consumers are likely to believe Respondent’s site is an extension of Complainant’s brand.

B. Rights or Legitimate Interests

In order the for Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show that –

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant is required to make out an initial prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

Respondent is not, on the material available to the Panel, making a legitimate noncommercial or fair use of the Domain Name and is not as an individual, business or other organization, known by the name “eros-wireless”. Respondent states that it is in the start up phase of a legitimate business and that payment will not be received until September 2006 in connection with the business. This does not constitute a “legitimate noncommercial” use of the Domain Name.

Further, there is no evidence that Respondent is known by the name “eros-wireless”or that Respondent uses the Domain Name in connection with a bona fide offering of goods or services. Respondent’s uncertified statements are not evidence. Knowingly making use of another’s trademark when registering a domain name is not a “bona fide” offering as contemplated by the Policy.

Finally, Respondent is not an authorized licensee of Complainant.

The Panel is satisfied that Complainants have established this element of the Policy on a prima facie basis. This has not been rebutted by Respondent.

Consequently, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Evidence of the registration and use of a domain name in bad faith is pursuant to 4(b) (iv) of the Policy is found when:

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

The Panel finds that Respondent is using the disputed Domain Names to divert Internet traffic to Respondent’s website for the purpose of selling adult escort services.

Respondent registered the Domain Name on July 23, 2005, years after Complainant began using its EROS mark in connection with the same services.

The Panel finds that the Domain Name <www.eros-wireless.com> was registered and used in bad faith by the Respondent for the commercial purpose of diverting Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website. See G.D. Searle & Co. v. Mahoney, FA 1112559 (Nat’l Arb. Forum 2002) (finding that the respondent registered and used the domain name in bad faith where respondent was using the confusingly similar domain name to attract users to its commercial website).

It is significant that Respondent did not deny any of Complainant’s diverse allegations relating to bad faith. In particular, Respondent did not deny the allegation that it knew of Complainant’s rights when it registered the domain name at issue. Moreover, Respondent’s quibble that Complainant does not itself own the copyrights in the copied photographs misses the point. Respondent’s use of photographs taken from Complainant’s site proves Respondent had actual knowledge of Complainant’s domain name.

Respondent also ignored Complainant’s allegation (supported by evidence) that Respondent gave false contact information when the domain name was registered. This serves as additional evidence of bad faith. Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000). For all these reasons, the Panel finds that the disputed Domain Name has been registered and used 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, <eros-wireless.com> be transferred to Complainant.

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Lawrence K. Nodine
Sole Panelist

Dated: July 25, 2006