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Group Kaitu, LLC and Darkside Productions, Inc. v. Savy Women, Inc. [2005] GENDND 1432 (27 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc. v. Savy Women, Inc.

Case No. D2005-0675

1. The Parties

The Complainants are Group Kaitu, LLC and Darkside Productions, Inc., Oakland, California, United States of America (collectively, “Complainants”), represented by Gavin Law Offices, PLC, United States of America.

The Respondent is Savy Women, Inc., Cathedral City, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <eros-carolinas.com>, <eros-honolulu.com>, <eros-international.com>, <eros-lingerie.com>, <eros-memphis.com>, <eros-monterey.com>, <eros-pismobeach.com>, <eros-riverside.com>, <eros-temecula.com>, <eros-temecula.net> (the “Domain Names”) are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Names at issue. On June 27, 2005, Go Daddy Software 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 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 the Respondent of the Complaint, and the proceedings commenced on July 4, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2005.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 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 the Rules, paragraph 7.

4. Factual Background

Complainants are two related entities based in Oakland, California, which between them own (KAITU) and/or use under license the following marks and domain names (collectively, “the Marks”):

EROS GUIDE (U.S. Registration No. 2,549,369) (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 (U.S. Registration No. 2,793,831) (registered December 16, 2003) (claiming date of first use in commerce of August, 1997), for an online portal linked to other related and unrelated Web sites in the field of adult-themed services and entertainment; and

EROS (U.S. Registration No. 2,794,843) (registered December 16, 2003) (claiming a date of first use in commerce of November 2002) 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.

Complainants claim that 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. And they further claim that millions of dollars have been invested to publicize and use those Marks.

Furthermore, in providing geographically focused online directories of services providers, Kaitu owns and licenses to Darkside domain names predominantly featuring “eros” modified by a geographic location. Currently, Kaitu owns well over 2,200 of such domain names containing the EROS mark, some of which date back to as early as 1994. Each such domain name is the Internet address for and directs users to a Web site which features information relating to, inter alia, Darkside’s guides and links to providers of adult-themed services who are physically located in the particular geographic region and city referenced in the domain name. For example, <eros-miami.com> resolves to a Web site that is “the ultimate guide to Miami erotic entertainment.” Since registering their domain names, Complainants have continuously operated their business from them.

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. Registration No. 2,794,843 (see above). Through its various EROS and EROS GUIDE Web sites, Darkside now also offers an online magazine, online adult classified advertisements, and an online adult superstore selling various products.

Complainants’ registered marks and domain names will be collectively referred to as “the Marks and domain names.”

Respondent registered the Domain Names in February 2004.

5. Parties’ Contentions

A. Complainant

The Respondent’s Domain Names are identical and/or confusingly similar to various trademarks in which the Complainants have rights. The Respondent has no rights or legitimate interests in respect of the Domain Names. The Domain Names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

Where a party fails to present evidence in its control, the panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that the Complainants must prove each of the following three elements to obtain an order that the Domain Names should be cancelled or transferred:

(i) 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

(ii) the 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

Complainants have established rights in the Marks and domain names both from actual use and registration on the Principal Register of the United States Patent and Trademark Office. Those registrations are entitled to a presumption of validity, which Respondent has not rebutted. Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004); Olymp Bezner GmbH & Co. KG v. Olympus Access Service, WIPO Case No. D2003-0958 (February 17, 2003); Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654 (August 24, 2001).

Regarding confusing similarity, it is well settled that the use of lower case letter format and the addition of the gTLD “.com” are not significant in determining whether the Domain Name is identical or confusingly similar to the mark at issue. CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). The only difference between nine of the Domain Names and the Marks is Respondent’s addition of a non-distinctive geographic identifier to the EROS mark. See Darkside Productions Inc & Group Kaitu, LLC v. Eros International Corporation, WIPO Case No. D2003-0065 (March 10, 2003) (finding competitor’s registration and use of various geographically modified versions of EROS to have been confusingly similar to Complainants Marks); see also Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273 (June 14, 2000) (finding that the combination of Complainant’s mark YAHOO with a number of generic words such as city names or single and two letter abbreviations for country names, gave rise to a domain name which was confusingly similar to the registered mark of the Complainant). The confusing similarity extends to the parties domain names as well (Darkside owns <eros-carolina.com>; Respondent is holding <eros-carolinas.com>). Moreover, Respondent has added to the confusion here because in registering nine Domain Names with geographic locations, Respondent copied Complainants’ business theme of using geographic identifiers alongside the EROS mark.

The only difference between the Domain Name <eros-lingerie.com> and the EROS mark consists of Respondent’s addition of the generic term “lingerie” to the EROS mark. It is well settled that the mere addition of a common word to a well-known trademark causes confusion to a substantial percentage of Internet users. See Geoffrey, Inc. v. Alexandras, National Arbitration Forum (NAF) Case No. FA99064 (October 2, 2001)(<sex-toysrus.com> confusingly similar to TOYS ‘R US); and Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919 (September 15, 2001) (<porscheimporter.com> and <porscheimporters.com> confusingly similar to PORSCHE). Furthermore, as noted above, insofar as Darkside sells lingerie online under its EROS mark and Kaitu owns a federal registration for the EROS mark for such goods, confusion is likely.

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Kaitu has never granted Respondent any rights to Complainants’ Marks and domain names. Insofar as Complainants have made a prima facie showing that Respondent lacks rights to the Domain Names (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in the Domain Names. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Pursuant to paragraph 4(c) of the Policy, Respondent may satisfy its burden by demonstrating any of the following: (i) before any notice of the dispute, 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; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is 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. Respondent has failed to provide the Panel with evidence to demonstrate any rights or legitimate interests in the Domain Names. The only evidence of record indicates otherwise.

It is undisputed that Respondent is not generally known by any of the Domain Names. Respondent registered the Domain Names in February 2004, long after Complainants acquired rights in the Marks. The only evidence of record indicates that Respondent is neither using the Domain Names in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate non-commercial or fair use of such names. Since registering the ten Domain Names over eighteen months ago, there is no evidence that Respondent has used any of them in connection with an active Web site. Rather, each of the Domain Names resolves to a holding page parked through the GoDaddy.com registrar which advertises GoDaddy’s products and services. Such use is not a bona fide use of the Domain Names. DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939 (February 3, 2005); Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981 (November 21, 2001); Charles Schwab & Co, Inc. v. Polanski, WIPO Case No. D2001-0959 (September 21, 2001).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states nonexclusive circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent have engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the respondent’s website or location.

Respondent has not contested Complainants’ rights in or registrations of the Marks and domain names. Insofar as Respondent is a person and/or business located in the United States at the time the Domain Names were registered, it was on notice of Complainants’ rights and registrations regarding the Marks. See Bloomberg L.P. v. Boo Design Services a/k/a BNY Bulletin Board, NAF Case No. FA97043 (May 17, 2001) (by legal presumption, respondent was on constructive notice of complainant’s rights in the trademark comprising the domain name registered by respondent due to complainant’s federal registration of trademark). Furthermore, the particular selection of the Domain Names registered indicates that when registering the Domain Names, Respondent was aware of Complainants’ rights in the Marks and their use of the Marks in their business. Nine of the Domain Names use the Mark EROS plus a geographic location (e.g., <eros-honolulu.com> and <eros-carolinas.com>). As mentioned earlier, Complainants use the exact theme in promoting their business (e.g., <eros-orlando.com> and <eros-carolina.com>). Similarly, the one Domain Name registration that uses EROS without a geographic location (<eros-lingerie.com>), uses a word which describes one of the kinds of products Complainants sell under the EROS mark. And that domain name is similar to at least one of Complainants’ domain names (<erosfetishwear.com>) in that both use a descriptor that indicates products sold by Complainants. Accordingly, the Panel concludes that Respondent registered the Domain Names in bad faith.

Furthermore, Respondent has used the Domain Names in bad faith. As discussed above, Respondent does not have any legitimate rights or interests in the ten Domain Names. Indeed, Respondent registered the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to Complainants or others for valuable consideration in excess of the documented out-of-pocket costs directly related to the Domain Names. It is undisputed that after receiving Complainants’ cease and desist letter, Respondent did not stop using the Domain Names or transfer them, as requested by Complainants. The letter prompted follow up communications (oral and written) between Respondent and Complainants which centered on Complainants’ possible purchase of one or more of the Domain Names. It is undisputed that Respondent advised that it had been offered US$50,000 by a third party to sell the <eros-carolinas.com> domain name. In an e-mail with the “subject” heading “RE:Eros Domains for Sale,” Respondent commented that “my decision to contact you first was because YOU were such a gentleman on the phone when we had discussed my .com’s before and as well I don’t like the way the front man for the other adult site made his approach.” Respondent went on to say that it does “believe in fair and decent dealing’s.” When Complainants hesitated to match the US$50,000 offer that Respondent allegedly received, Respondent commented that it is “…aware of the net profit a site can make once up and going [and that it] check[s] site searches dailey [sic] and know who’s looking for what where and when [sic] so please don’t take my easy going nature as any type of weakness or that I’m unknowledgeable….”

Whether it would be Complainants or another buyer, Respondent was looking to sell the Domain Names. The US$50,000 discussed is well in excess of any out-of-pocket costs spent by Respondent to register the single Domain Name under discussion or even the sum to register all ten. Respondent did not appear to be a stranger to the world of online adult-themed entertainment services providers. Where, as here, a Respondent knows of the renown of the Complainant’s trademarks, a finding of opportunistic bad faith is in order. See Boiron S.A. v. José Antonio Paya Serer, WIPO Case No. D2001-0118 (May 2, 2001).

For the foregoing reasons, the Panel finds that Policy, paragraph 4(a)(iii) has been satisfied.

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 Names <eros-carolinas.com>, <eros-honolulu.com>, <eros-international.com>, <eros-lingerie.com>, <eros-memphis.com>, <eros-monterey.com>, <eros-pismobeach.com>, <eros-riverside.com>, <eros-temecula.com>, <eros-temecula.net> be transferred to the Complainants.

Harrie R. Samaras
Sole Panelist

Date: August 27, 2005