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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC, Darkside Productions, Inc. v. Glen DiGirolamo

Case No. D2007-1423

1. The Parties

Complainant is Group Kaitu, LLC, Darkside Productions, Inc., California, United States of America, represented by Gavin Law Offices, PLC, United States of America.

Respondent is Glen DiGirolamo, New Jersey, United States of America.

2. The Domain Names and Registrar

The disputed domain names <eros-nj.com> and <erosnj.com> are registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2007. On September 28, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain names at issue. On September 28, 2007, Wild West Domains, Inc.

transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on October 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2007. Respondent did not submit a formal Response. Accordingly, the Center notified Respondent’s default on October 29, 2007. The Center appointed Sandra J. Franklin as the sole panelist in this matter on November 14, 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

Complainant Group Kaitu, LLC, licenses its EROS marks to Complainant Darkside Productions, Inc. (hereafter referred to as the Complainant for purposes of this case) for use in connection with adult-themed products and services. Complainant holds a United States registration for EROS GUIDE, with use dating back to 1997. It also holds United States registrations for EROS in various classes with use dating back to 1997, 2001 and 2002, all before Respondent registered the <eros-nj.com> and <erosnj.com> domain names. Complainant also does business, including offering guides in various geographical areas, under many domain names incorporating the EROS mark along with a geographical indicator, such as a state name.

5. Parties’ Contentions

A. Complainant makes the following assertions:

(i) Respondent’s <eros-nj.com> and <erosnj.com> domain names are confusingly similar to Complainant’s EROS marks.

(ii) Respondent does not have any rights or legitimate interests in the <eros-nj.com> and <erosnj.com> domain names.

(iii) Respondent registered and used the <eros-nj.com> and <erosnj.com> domain names in bad faith.

B. Other than three brief e-mail communications dated September 28, 2007 and October 29, 2007 sent by Respondent to the Center which did not specifically address Complainant’s contentions, Respondent failed to submit a formal Response in this proceeding.

6. Discussion and Findings

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 formal response, the Panel shall decide this administrative proceeding on the basis of 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

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

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

A. Identical or Confusingly Similar

Complainant asserts rights in its EROS marks through registration with the United States Patent and Trademark Office. The Panel finds that Complainant has established rights in the EROS marks for purposes of Policy paragraph 4(a)(i). See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum December 21, 2006) (finding that complainant’s federal trademark registration establishes rights under Policy paragraph 4(a)(i)); see also Metro Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum, February 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority).

Complainant contends that Respondent’s <eros-nj.com> and <erosnj.com> domain names are confusingly similar to Complainant’s EROS mark under Policy paragraph 4(a)(i). Respondent incorporates Complainant’s EROS mark in its entirety and merely adds the “-nj.com” or “nj.com”, a reference to New Jersey, Respondent’s home state. This is not enough to distinguish the disputed domain names from Complainant’s marks. See Wal-Mart Stores, Inc. v. Walmarket Canada, WIPO Case No. D2000-0150 (May 2, 2000), the panel found that the addition of the geographic term “Canada” failed to distinguish the respondent’s domain name from Complainant’s well-known WAL-MART mark. Similarly in VeriSign, Inc. v. Tandon, WIPO Case No. D2000-1216 (November 16, 2000), the panel refused to hold that the addition of the geographic term “India” was a distinguishing characteristic in the <verisignindia.com> and <verisignindia.net> domain names under the Policy. The Panel finds that Respondent’s <eros-nj.com> and <erosnj.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy paragraph 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy paragraph 4(a)(i).”).

The Panel finds that Policy paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Complainant contends that Respondent does not have rights or legitimate interests in the <eros-nj.com> and <erosnj.com> domain names. In circumstances such as this where Respondent has failed to respond, the Panel accepts Complainant’s assertions as true, amounting to a prima facie case under the Policy. Once a prima facie case is made, the burden of showing rights or legitimate interests shifts from Complainant to Respondent. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, WIPO Case No. D2000-1228 (November 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

Complainant states that Respondent is using the <eros-nj.com> and <erosnj.com> domain names to operate websites featuring links to various competing websites competing with Complainant’s. The Panel infers from Respondent’s use of the disputed domain names that it is collecting click-through fees for each Internet user redirected to a website other than Complainant’s. Numerous panels before have held that the use of a domain name found to be confusingly similar to an established mark for the purpose of collecting click-through fees is neither a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).

Complainant also states that it has in no way licensed Respondent to register domain names featuring Complainant’s EROS mark. There is nothing in record that would suggest Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <eros-nj.com> and <erosnj.com> domain names for purposes of Policy paragraph 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum December 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).

The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Respondent’s <eros-nj.com> and <erosnj.com> domain names resolve to websites featuring links to competitors of Complainant. The Panel finds this to establish Respondent’s bad faith registration and use of the disputed domain in an attempt to disrupt Complainant’s business pursuant to Policy paragraph 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum November 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy paragraphs 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

Respondent is presumed to commercially benefit from each misdirected Internet user to a competitor of Complainant by receiving “click-through” fees. The Panel finds this to be additional evidence of Respondent’s bad faith intent to commercially benefit from a confusingly similar domain name pursuant to Policy paragraph 4(b)(iv). See AltaVista Co. v. Krotov, WIPO Case No. D2000-1091 (October 25, 2000) (finding bad faith under Policy paragraph 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

The Panel finds that Complainant has satisfied Policy paragraph 4(a)(iii).

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-nj.com> and <erosnj.com> be transferred to Complainant.

Sandra J. Franklin
Sole Panelist

Dated: November 26, 2007