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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

 

Group Kaitu, LLC v. Sergei Vasiliev

Case No. D2006-1229

1. The Parties

The Complainant is Group Kaitu, LLC, Oakland, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.

The Respondent is Sergei Vasiliev, Aktau, of Kazakhstan.

2. The Domain Name and Registrar

The disputed domain name <erosporn.com> is registered with EstDomains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2006. On September 26, 2006, the Center transmitted by email to EstDomains, Inc. a request for registrar verification in connection with the domain name at issue. On September 27, 2006, EstDomains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 5, 2006. 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”), 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 October 9, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2006.

The Center appointed Ian Blackshaw as the Sole Panelist in this matter on November 13, 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.

4. Factual Background

Darkside and Kaitu are related entities; by written agreement, Kaitu owns all the Complainant’s service marks and domain names claimed herein and licenses them to Darkside for use in connection with the operation of various web sites.

The Complainant is the owner of the following United States Service Marks (among others):

- EROS GUIDE (Registration No. 2,549,369) (filed June 26, 2000 and registered March 19, 2002) (claiming a 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) (filed April, 24, 2002 and registered December 16, 2003) (Amendment to Allege Use filed January 28, 2003, claiming date of first use in commerce of 8/24/97), for an online portal linked to other related and unrelated Web sites in the field of adult-themed services and entertainment;

- EROS (Registration No. 2,794,843) (filed December 9, 2002 and registered December 16, 2003) (claiming a 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; and

- EROS (Registration No. 3,134,894) (filed April 16, 2004, and registered August 29, 2006) (claiming first use in commerce from November 11, 2001) for providing online communications via the global computer network, namely, online magazines with subject matter related to adult entertainment and other adult-themed topics.

In addition, the Complainant owns pending applications to federally register the following marks:

EROS (U.S. Ser. No. 78/189,252) (filed November 26, 2002) (filed based on intent to use), 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 (U.S. Ser. No. 78/189,244) (filed November 26, 2002) (based on intent to use) for publications, namely books and magazines with subject matter related to adult entertainment, alternative life-styles, and other adult-themed topics.

The Panel has been provided with copies of the corresponding trademark registrations and pending applications.

Collectively, the U.S. Trademark Registrations and U.S. Trademark Applications noted above are hereinafter referred to as “the Complainant’s Marks”.

Four of the Complainant’s Marks are registered in the United States with the United States Patent and Trademark Office on the Principal Register. The Complainant’s trademark registrations constitute “prima facie evidence of the validity of the [EROS and EROS GUIDE] trademark[s]”. See Backstreet Prods., Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake Show and Cupcakes – First Patrol, WIPO Case No. D2001-0654; Susan Miller v. John Zuccarini, d/b/a Cupcake Movie, WIPO Case No. D2001-0064; Olymp Bezner GmbH & Co. KG v. Olympus Access Service, WIPO Case No. D2003-0958.

Since 1997, Darkside has been the owner and operator of World Wide Web sites located at “www.erosguide.com” and “eros-guide.com” at which it operates an Internet guide to adult entertainers. Darkside owns and operates a similar site at “www.eros.com” and at many additional “EROS” sites. The Panel has been provided with copies of the above-mentioned sites.

Since 1997, Darkside 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 for EROS (Registration No. 2,794,843) (filed December 9, 2002 and registered December 16, 2003) (claiming a date of first use in commerce -of 11/16/02) for, amongst other things, providing an online shopping service featuring the retail and wholesale distribution of adult themed products and services via the global computer network.

The Complainant registered the <eros-guide.com> and <erosguide.com> domain names on April 22, 1997 and April 29, 1997, respectively, and has since continuously operated from them. The Complainant owns and operates over thirty such sites which are geographically targeted to cities located within the United States and throughout the world, specifically including Canada and England.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

On information and belief, the EROS GUIDE and EROS marks are internationally known marks in the field of providing Internet guides or directories to adult entertainers and related adult themed goods and services. Further, the Complainant has invested millions of dollars publicizing and using the Complainant’s Marks to ensure automatic identification with excellence in providing Internet guides to adult entertainers and related goods and services. The Complainant’s website located at “www.erosguide.com” receives over five million page views per day. Moreover, according to web traffic statistics provided by “Alexa.com”, the Complainant’s family of “EROS” websites, when viewed collectively, ranks in the top four thousand recipients of web traffic in the world.

To implement its provision of online directories of services providers, Kaitu has also registered, owns and licenses to Darkside scores of domain names predominantly featuring the mark EROS as modified by a geographic location. In fact, Kaitu currently owns well over 2,200 such registered domains containing the EROS and/or EROS-GUIDE marks, some of which date back to as early as 1997. Hereinafter, the Complainant’s Marks and such domain names will be collectively referred to as “the Complainant’s Marks and Domains”. Each such domain name is the Internet address for and directs users to a website which features information relating to, inter alia, Darkside’s escort guides and links to providers of adult-themed services.

On or about August 11, 2006, the Complainant was made aware of the existence of the disputed domain name. The content of the website located at the domain name consists of adult-themed entertainment, namely, hard core pornographic photographs. The Panel has been provided with a copy thereof. The Respondent’s website also contains hyperlinks to scores of related pornographic websites.

The only difference between the disputed domain name and the Complainant’s EROS Marks rests in the mere addition by the Respondent of the generic term “porn” to the EROS mark. See Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (finding that the combination of the complainant’s mark “yahoo” with a number of generic words such as a city name or single and two letter abbreviations for a country name, gave rise to a domain name which was confusingly similar to the registered mark of the complainant); see also, eBay, Inc. v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (finding that <gayebay.com> is confusingly similar to <ebay.com>).

A2. The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent is not licensed, nor has the Respondent obtained permission, either express or implied, from the Complainant to use the Complainant’s Marks and Domains, or any domain name incorporating such marks or domains, either at the time the Respondent registered and began using the disputed domain name (August 3, 2003), or at any time since.

Under the UDRP, paragraph 4(c)(i-iii), the Respondent’s rights or legitimate interests to a domain name can be established by demonstrating any of the following three conditions: (i) before any notice to Respondent of the dispute, the 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) Respondent having been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or (iii) Respondent’s 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.

The Respondent’s opportunistic registration of a derivative of the Complainant’s Mark is not in connection with a bona fide offering of goods or services pursuant to Policy Paragraph 4(c)(i). The Respondent’s registration and use of the disputed domain name for a website offering pornographic content competes with the Complainant’s adult-themed goods and services and does not constitute a bona fide offering of goods pursuant to Policy 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii). Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery, WIPO Case No. D2004-1060. See, e.g., Yahoo! Inc. v. Dkal (NAF FA0402000238650) (“Respondent’s <yahooautos.com> domain name is confusingly similar to the Complainant’s YAHOO! mark and is used to offer goods and services that compete with Complainant. The Respondent’s competitive use of the infringing domain name does not constitute a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).”).

There is no evidence that the Respondent has been commonly known as the disputed domain name as required under Policy, paragraph 4(c)(ii).

For the foregoing reasons, the Respondent does not have any right or legitimate interest in the disputed domain name.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant was widely known globally and had an existence that could be easily searched on the Internet at the time of the Respondent’s registration of the disputed domain name. Given the pervasive web presence created by the Complainant, there is a high probability that the Respondent knew about the rights of the Complainant at the time of acquiring the disputed domain name, particularly given the fact that the Respondent operates in the field of adult-themed entertainment. In further support of its position, The Complainant notes that several links on the Respondent’s English language website link to various pages of an adult-themed website located at “www.worldofporn.us”. A copy of this website has been provided to the Panel. According to the relevant registrar’s “whois information”, the domain name <worldofporn.us> is also owned by the Respondent. A copy of this verification has also been provided to the Panel.

The Respondent clearly intends to intentionally attract, for commercial gain, Internet users to its various websites, including those bearing the “.us” country code top level domain, by creating a likelihood of confusion with the Complainant’s EROS mark. By availing himself of the .us country code domain registration process, the Respondent has availed himself of U.S. benefits and should be deemed to have constructive notice of the Complainant, in addition to the highly probable actual notice alleged herein. The Respondent must have registered the disputed domain name with the Complainant’s trademark in mind in an effort to benefit from the goodwill of the mark and attract and divert customers interested in the Complainant’s online escort and adult-themed entertainment goods and services. See, e.g., Rada Mfg. Co. v. J. Mark Press a/k/a J. Mark Cutlery, WIPO Case No. D2004-1060. These facts are sufficient to show that registration and use of the Respondent’s domain name is in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

As numerous prior Panels have held, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the Complainant’s trademark EROS, which is owned and has been commercially used and promoted by the Complainant in and for the purposes of its business and the sale of its services and related products for several years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark EROS is well-known to and has a good reputation in the adult-themed entertainment and related products’ field. Thus, there is a clear misuse and infringement on the part of the Respondent of the Complainant’s well-known trademark and such use is also in breach of the Policy.

The Panel agrees with the Complainant’s contention that the addition of the word “porn” is purely descriptive and, for trademark purposes, adds no distinctiveness or source of origin elements whatsoever to the disputed domain name, which essentially incorporates the Complainant’s well-known trademark (see F. Hoffmann-La Roche AG v. Stoyan Stoyanov, WIPO Case No. D2006-0197 and also other WIPO Cases cited above by the Complainant).

In view of this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the trademark EROS, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration, substantial financial investment in and promotion of the trademark, as well as exclusive commercial use of the same for several years for the purposes of its business.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s well-known trademark EROS and its services and related products sold under that brand, the Respondent must in all likelihood have known, when registering the disputed domain name that the Respondent could not have - or, indeed, claimed - any such rights or interests. This is re-enforced by the addition by the Respondent of the “descriptor” “porn” to the Complainant’s trademark EROS as part of the disputed domain name, in an attempt, which, as mentioned above, fails, to make it distinctive and different from such mark.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known business carried on by the Complainant.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering for sale on its web site services and products which are in competition with those of the Complainant.

Thus, the Respondent’s competitive use of the infringing domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as held in Yahoo! Inc. v. Dkal (NAF FA0402000238650) and cited above by the Complainant.

Neither is there any evidence that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known trademark EROS as part of the disputed domain name.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and the consequential tarnishing of the Complainant’s trademark. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark and unfairly attracting to its own business the substantial goodwill that the Complainant has established over several years in its mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the domain name at issue.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its trademark EROS over several years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s notoriety in the adult-themed entertainment field. In fact, as was pointed out in paragraph 6.8 of the Decision in Hoffmann-La Roche Inc. v. WhoisGuard, WIPO Case No. D2005-1288, no claim for bona fide use of a domain name can be made “….when a respondent uses a disputed domain name confusingly similar to an invented mark in which a complainant has rights and [the respondent] uses that disputed domain name to redirect Internet users to a commercial website selling the very same product identified by the mark. To do otherwise would allow respondents to trade off the goodwill of trademark owners with impunity”.

Again, by registering and using the domain name incorporating the Complainant’s trademark, EROS, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, none of which appears to be the case.

Indeed, using someone else’s well-known brand name to divert Internet users and consumers to websites offering products that compete with those of the Complainant and benefiting directly and indirectly from so doing can hardly be described as acting in good faith.

Furthermore, the several links on the Respondent’s English language website to various pages of an adult-themed website located at “www.worldofporn.us” which, according to the relevant registrar’s “whois information”, is also owned by the Respondent is further evidence of bad faith on the part of the Respondent.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also an indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue 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 <erosporn.com> be transferred to the Complainant.

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Ian Blackshaw

Sole Panelist

November 14, 2006