DECISION

Byron R. Mayo d/b/a Darkside Productions v. Michael Crowder

Claim Number: FA0206000114592

PARTIES

Complainant is Byron R. Mayo d/b/a Darkside Productions, Alameda, CA (“Complainant”) represented by Paul J. Cambria, of Lipsitz, Green, Fahringer, Roll, Salisbury & Cambria, LLP.  Respondent is Michael Crowder, Des Moines, IA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <erosescortguide.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.

On June 14, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <erosescortguide.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 16, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@erosescortguide.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <erosescortguide.com> domain name is confusingly similar to Complainant’s EROS GUIDE registered mark.

2. Respondent does not have any rights or legitimate interests in the <erosescortguide.com> domain name.

3. Respondent registered and used the <erosescortguide.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds U.S. Service Mark Reg. No. 2,549,369, issued March 19, 2002, for the EROS GUIDE mark, which is used for the dissemination of advertising for the goods and services of others via the global computer network. Complainant filed the application to register the EROS GUIDE mark with the U.S. Patent and Trademark Office (“USPTO”) on June 26, 2000.

Complainant registered the <eros-guide.com> and <erosguide.com> domain names on April 22, 1997 and April 29, 1997, respectively, and has since continually operated from them. Complainant began using the EROS GUIDE trademark in interstate and international commerce on October 30, 1997.

Respondent registered the disputed <erosescortguide.com> domain name on March 18, 2002. Complainant’s Submission reveals that Respondent’s domain name resolves to a website that offers advertisements in the field of adult-themed services that are identical to the services offered by advertisers at Complainant’s <erosguide.com> domain name and connected website. Complainant’s investigation also produced evidence that Respondent has downloaded copyrighted materials from Complainant’s website at <erosguide.com> and posted such materials on its website located at <erosescortguide.com>. 

Complainant’s counsel contacted Respondent attempting to negotiate a transfer of the subject domain name. On or about May 10, 2002, Respondent offered to sell the disputed domain name for $15,000.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has a registered service mark with the USPTO that was listed on the Principal Register on March 19, 2002. However, because Respondent registered the disputed domain name on March 18, 2002, it is necessary for Complainant to establish common law rights in the EROS GUIDE mark that would protect the value of the mark prior to the registration of the disputed domain name.

Complainant has used the EROS GUIDE mark in conjunction with its <erosguide.com> website since 1997. Complainant filed the application to register its EROS GUIDE mark with the USPTO on June 26, 2000, and currently has a pending trademark application for registration of its EROS mark (Serial No. 76/399779). Complainant has demonstrated that it has sufficient rights in the EROS GUIDE mark to establish common law protection of the mark when Respondent registered the subject domain name on March 18, 2002. The USPTO’s subsequent approval of Complainant’s application on March 19, 2002 adds further validity to Complainant’s allegations that it has rights in the EROS GUIDE mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (“The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the policy”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

Respondent’s <erosescortguide.com> domain name is confusingly similar to Complainant’s EROS GUIDE common law mark. Respondent’s domain name fully incorporates Complainant’s EROS GUIDE mark while deviating only with the addition of the word “escort,” which merely denotes the nature of the adult-themed services offered at Complainant’s website, <erosguide.com>. The addition of an industry-related word that has an obvious connection to Complainant’s mark fails to create a distinct and separate mark; thus, rendering Respondent’s domain name confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <erosescortguide.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent’s primary use of the disputed domain name is to divert Internet users to its own adult services website, while attempting to benefit from the fame associated with Complainant’s EROS GUIDE mark. Respondent’s opportunistic registration of Complainant’s mark is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Complainant’s uncontested Submission reveals that Respondent has downloaded copyrighted materials from Complainant’s website in order to advertise identical services. Such infringing use of Complainant’s mark in a domain name fails to demonstrate Respondent’s rights or legitimate interests in <erosescortguide.com>. See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the Respondent's sole purpose in selecting the domain names was to cause confusion with the Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Furthermore, Respondent’s willingness to sell its rights to the domain name, requesting the price of $15,000, suggests that Respondent does not have any rights or legitimate interests in the domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use); see also  Hewlett-Packard Co. v. High Perf. Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

There is no evidence that suggests Respondent is commonly known by the <erosescortguide.com> domain name pursuant to Policy ¶ 4(c)(ii). No apparent connection exists between Respondent and the EROS GUIDE mark, except that Respondent is opportunistically using the fame associated with Complainant’s mark to its advantage. Because Complainant’s EROS GUIDE mark has been in use for nearly five years and Respondent’s website emulates Complainant’s copyrighted materials and targets the same consumers, there is a presumption that Respondent does not have rights or legitimate interests in a domain name that incorporates Complainant’s EROS GUIDE mark in its entirety. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

           

Registration and Use in Bad Faith

Complainant’s Submission provides uncontested evidence that Respondent registered the domain name in order to sell or transfer the registration, demanding a price that far exceeds out-of-pocket expenses. Circumstances indicate that Respondent initiated an offer that would transfer rights of <erosescortguide.com> to Complainant for $15,000; thus, Respondent’s actions evidence bad faith registration pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).

Complainant has also provided this Panel with evidence that Respondent has intentionally downloaded copyrighted materials from Complainant’s <erosguide.com> website for use on its <erosescortguide.com> website. As a competitor of Complainant in the adult-themed services advertising industry, Respondent’s use of a domain name confusingly similar to Complainant’s EROS GUIDE mark is evidence of an attempt to disrupt Complainant’s business. Respondent’s use of the subject domain name is bad faith registration and use as defined by Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

Furthermore, Respondent has registered and is using the <erosescortguide.com> domain name to intentionally attract, for the purpose of commercial gain, Internet advertisers who are confused about the services and products offered on the website. Complainant’s Submission includes a correspondence between Respondent and one of Complainant’s advertisers, Sola Pump, in which Respondent is attempting to broker an annual advertising deal for its website. Respondent’s attempt to monetarily benefit from the confusion it creates by using the infringing domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <erosescortguide.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated: July 30, 2002

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