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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc. v. Wan-Fu China, Ltd.

Case No. D2007-0499

 

1. The Parties

The 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.

The Respondent is Wan-Fu China, Ltd., Nassau, Bahamas.

2. The Domain Names and Registrars

The disputed domain name <club-eros.com> is registered with Domain Doorman LLC.

The disputed domain names <eros-gudie.com>, <eros-seattle.com> and <eros-chciago.com> are registered with Belgium Domains Inc.

The disputed domain names <eros-guied.com>, <eros-guiide.com>, <eros-bosto.com>, <eros-tempel.com> and <eros-demonia.com> are registered with Capitol Domains Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 3, 2007, the Center transmitted by email to DomainDoorman, LLC, Belgium Domains LLC and Capitoldomains, LLC, requests for registrar verification in connection with the domain names at issue. On April 4, 2007, DomainDoorman LLC transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant of the domain name <club-eros.com> and provided the contact details. On April 4, 2007, Belgium Domains LLC transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant of the domain <eros-gudie.com>, <eros-seattle.com> and <eros-chciago.com> and provided the contact details. On April 4, 2007, Capitol Domains LLC transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant of the domain names <eros-guied.com>, <eros-guiide.com>, <eros-bosto.com>, <eros-tempel.com> and <eros-demonia.com> and provided the contact details. 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 April 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2007.

The Center appointed Michael J. Spence as the sole panelist in this matter on May 25, 2007. 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

The Complainants are related entities. The Complainant Kaitu owns all the Complainants’ service marks and domain names and licenses their use to the other Complainants. The Complainants’ marks include United States of America registrations for the service marks EROS GUIDE and EROS, registered for on-line adult entertainment services. The Complainants have a great many domain name registrations including the word EROS, including several in which the word EROS is modified by a geographic location, as in <eros-newhampshire.com>, <newenglanderos.com> and <motrealeros.com>. The Complainants claim to have invested significant sums of money in publicizing and using their marks. The Respondent uses the disputed domain names for adult entertainment websites, but apparently is not generally known by any of the disputed domain names.

 

5. Parties’ Contentions

A. Complainant

The Complainants contend that the disputed domain names are identical or confusingly similar to their service marks and that at least a large number of the disputed domain names involve ‘typosquatting’. They further contend that the Respondent has no rights or legitimate interests in respect of the disputed domain names because the Respondent is not generally known by any of the disputed domain names, but has used them only to compete with the Complainants by diversion of trade otherwise directed to the Complainants’ websites. Finally, Complainants contend that the systematic imitation of their marks by the Respondent is evidence of bad faith, as is the use of the disputed domain names to acquire commercial gain by the diversion of trade through knowingly causing consumer confusion.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The marks EROS GUIDE and EROS are undoubtedly “on the weaker side of the range of distinctive marks” (to borrow a phrase from the panel in EAuto LLC v. EAuto Parts, WIPO Case No. D2000-0096). It might be expected that adult-themed websites would commonly choose to be identified with the Greek god of sexual love and an Internet user would not necessarily assume that a domain name containing the word EROS was associated with the Complainants.

Nevertheless, the disputed domain names do seem to be confusingly similar to the Complainants’ marks. The first group of confusingly similar names are those that involve apparent ‘typosquatting’ around the mark EROS GUIDE. These are <eros-gudie.com>, <eros-guied.com>, and <eros-guiide.com>. The second group of confusingly similar names are those that exploit the Complainants’ established practice of using their marks modified by a geographic location. Some of these also involve ‘typosquatting’. They are <eros-bosto.com>, <eros-seattle.com> and <eros-chciago.com>. More difficult are those disputed names that involve the combination of the mark EROS with another term that is not a geographic location, <eros-tempel.com>, <club-eros.com> and <eros-demonia.com>. However, given the very widespread use of the mark EROS as part of compound domain names by the Complainants, and by analogy with many panel decisions such as Porsche v. Brown, WIPO Case No. D2001-0919, these also seem confusingly similar to the Complainants’ names. It is very probable that these marks, which are not inherently highly distinctive, have become distinctive through use in relation to the provision of on-line guides to adult-themed websites.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to all the disputed domain names.

B. Rights or Legitimate Interests

It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed names (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). Where the disputed domain names correspond to marks that are ‘on the weaker side of distinctive marks’, this burden tends to be higher than it might otherwise be. It is inherently more likely that a respondent has a legitimate interest in using a domain name that corresponds to a less distinctive mark.

In this case the Respondent has been using the disputed domain names for websites that link to adult-themed entertainment and services. The question for the Panel is therefore whether this use constitutes a ‘bona fide offering of goods or services’ that might give rise to an interest in the disputed names. The Complainants contend that it does not, highlighting the fact that the Respondent is not known by any of the disputed domain names, and pointing to panel decisions in which it has been held that the ‘registration and use of trademark related domain names for websites directly competing with Complainants’ services does not constitute a bona fide offering of goods or services pursuant to the Policy’ (specifically Rada Mfg Co. v. J. Mark Press a/k/a K. Mark Cutlery, WIPO Case No. D2004-1060 and Yahoo! Inc v. Dkal NAF FA0402000238650). The difficulty is that in each of the panel decisions cited, the disputed domain names corresponded to inherently distinctive marks. However, given the very large number of the Complainants’ domain name registrations related to its marks, suggesting a strong likelihood of acquired distinctiveness, and given that the Complainants’ marks long pre-date the Respondent’s domain name registrations, it is likely that the Respondent was aware that the disputed domain names would cause confusion at the time of their registration and that they do not have any rights or legitimate interests in them. This conclusion is all the more open to the Panel because of the clear use of typosquatting and the lack of rebuttal by the Respondent.

The Panel finds that the Complainant has satisfied the second element of Paragraph 4(a) of the Policy in relation to the disputed domain names.

C. Registered and Used in Bad Faith

Two of the features of this case already referred to point to the conclusion that the disputed domain names have been registered in bad faith. These are the fact that many of the disputed domain names seem to involve ‘typosquatting’ for commercial gain and the fact that the Respondent very likely knew at the time of the registration of the disputed names that they would be likely to cause confusion, but registered them apparently with the purpose of thereby deriving commercial gain. In addition, the Complainants’ have rightly pointed out that the systematic registration of multiple domain names ‘in a pattern directed against’ the Complainants can be taken as evidence of bad faith (Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046).

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain names.

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 <club-eros.com>, <eros-gudie.com>, <eros-seattle.com>, <eros-chciago.com>, <eros-guied.com>, <eros-guiide.com>, <eros-bosto.com>, <eros-tempel.com> and <eros-demonia.com> be transferred to the Complainants.

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Michael J. Spence
Sole Panelist

Dated: June 10, 2007

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ADDENDUM TO ADMINISTRATIVE PANEL DECISION

This is an addendum to the Administrative Panel Decision (“Decision”) dated June 10, 2007 with regard to the disputed domain names <eros-seattle.org> and <eros-guild.com>. The Panel wishes to issue the following clarifications.

<eros-seattle.org>

A typographical error inadvertently crept into the Panel’s decision with regard to the domain name <eros-seattle.org>, which is incorrectly referenced in the Decision as <eros-seattle.com>. As also follows from the Complaint and the notification of the Complaint, it is in fact the domain name <eros-seattle.org> that the Panel orders be transferred to the Complainants.

<eros-guild.com>

The Complaint as filed contained a total of 10 domain names whereas the Panel’s Decision inadvertently omitted a reference to the domain name <eros-guild.com>.

The domain name <eros-guild.com> has been part of these proceedings from the start. The Complainants included the domain name <eros-guild.com> in their Complaint. On April 4, 2007, Capitol Domains LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain name <eros-guild.com> and that the domain name would remain locked during the proceedings, and also provided the Respondent’s contact details. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, including <eros-guild.com>, and the proceedings commenced on April 16, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default for all 10 domain names on May 8, 2007.

The Panel confirms that the analysis and findings made in the Decision with regard to the other nine domain names apply equally to <eros-guild.com>.

Decision

The Panel reaffirms the Decision in favor of the Complainants, and in light of the foregoing, confirms that <eros-seattle.org> and <eros-guild.com> are included in the domain names to be transferred to the Complainants.

For avoidance of doubt, the Panel restates paragraph 7 of its Decision as follows:

“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 <club-eros.com>, <eros-gudie.com>, <eros-seattle.org>, <eros-chciago.com>, <eros-guied.com>, <eros-guiide.com>, <eros-bosto.com>, <eros-tempel.com>, <eros-demonia.com> and <eros-guild.com> be transferred to the Complainants.”

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Michael J. Spence
Sole Panelist

Dated: July 30, 2007