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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Darkside Productions, Inc.; Group Kaitu, LLC v. Eros Adult Escorts

Case No. D2008-0078

 

1. The Parties

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

The Respondent is Eros Adult Escorts, New York, New York, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <erosadultescorts.com> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2008. On January 21, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 22, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 22, 2008. 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

Group Kaitu LLC, a Delaware limited liability company, and Darkside Productions, Inc., a California corporation, are owner and licensee, respectively, of the service marks upon which this proceeding is based. They are collectively referred to herein as “Complainant”.

Complainant has registered the word service mark EROS, and various EROS-formative service marks, on the Principal Register of the United States Patent and Trademark Office (USPTO). These include for the term EROS, registration no. 2793831, dated December 16, 2003, in international class (IC) 41, covering “[p]oviding links to the websites of others in the field of adult-themed entertainment”; registration no. 2794843, dated December 16, 2003, in ICs 42 & 35, covering, inter alia, “providing customized online web pages featuring user-defined information”; registration no. 3134894, dated August 29, 2006, in IC 41, covering “[p]roviding online publications via the global computer network, namely online magazines with subject matter related to adult entertainment and other adult-themed topics”. Registrations for EROS-formative service marks include “EROS GUIDE”, registration no. 2549369, dated March 19, 2002, in IC 35, covering “dissemination of advertising for the goods and services of others via a global computer network”, claiming first use in commerce of August 1997 (other registrations are in effect for “EROS MEN” and “EROSTOYS”). Complainant has several service mark applications pending at the USPTO with respect to “EROS ESCORTS” (application serial nos. 77311350, 77311038 & 77311055). Each of these applications was filed on October 23, 2007. (Complaint, Exhibits 2-3)

Complainant has since 1997 operated commercial Internet websites at “www.erosguide.com” and “www.eros-guide.com”, and operates a commercial website at “www.eros.com”. Complainant has registered at least 214 EROS-formative domain names (Complaint, Annex 6), and uses those domain names to host or redirect Internet users to its principal commercial websites. At those websites, Complainant advertises the services of adult entertainment service providers through links to individuals and third-party service providers. At least some of those links are of a sexually explicit orientation in respect to the nature of the services provided. (Complaint, Exhibits 4-5)

Complainant alleges that it registered the domain name <erosescorts.com> in 2001 and has continuously since that time operated a website at that Internet address. The “www.erosescorts.com” website provides links, inter alia, to adult classified ads. Complainant has not provided direct evidence of the date of its registration of the <erosescorts.com> domain name, nor has it provided direct evidence supporting the length of time for which it claims it has operated a website under that name.

Complainant indicates that it has spent several millions of dollars promoting its web-based businesses identified by EROS and EROS-formative service marks.

The Panel queried the USPTO TARR database with respect to the status of Complainant’s applications for registration with respect to EROS ESCORTS (Panel visits of March 9-10, 2008). Each of the applications filed by Complainant was filed as an “intent-to-use” application. The USPTO on March 4, 2008 (subsequent to the initiation of this proceeding) emailed to Complainant a non-final action with respect to each of these three pending applications. The USPTO office action raises certain questions with respect to similarity of prior registered marks of third parties and Complainant’s identification of lines of commerce.

According to the Registrar’s Verification report, Respondent “Eros Adult Escorts” is registrant of the disputed domain name <erosadultescorts.com>. According to that report, the record of the disputed domain name was created on November 7, 2007. The contact information for Respondent is an e-mail address, a post office box in New York, and a facially non-operational telephone number (5555555555).

The disputed domain name <erosadultescorts.com> has been used by Respondent to direct Internet users to a website captioned with “Eros Adult Escorts & Female Companions”. Upon entering the web portal (certifying minimum age), the user is directed to a list of escort service providers based upon geographic location. Clicking through a particular geographical designation brings the user to advertising photographs of female escorts. In addition to photographs, the geographic web pages include blocks with a nude female photograph headed by “List your ad here!”, with a link to “Click Here to Advertise”. (Complaint, Exhibit 8)

By emails December 12 and 16, 2007, Respondent contacted existing advertisers on Complainant’s websites indicating that their advertisements would be transferred to Respondent’s websites, at “www.erosadultescorts.com”, “www.upscaleescorts.net” and “www.usaadultescorts.com”, requesting e-mail confirmation from the advertiser and requesting fees for advertising outside the United States. (Complaint, Exhibit 11). The websites operated at <upscaleescorts.net> and <usaadultescorts.com> have included links to the website located at the disputed domain name. (Id., Exhibit 12)

The Registration Agreement in effect between Respondent and GoDaddy.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant alleges rights in the service mark EROS based on use in commerce and as evidenced by registration at the USPTO. Complainant alleges rights in the service mark EROS GUIDE based on use in commerce and as evidenced by registration at the USPTO, as well as registration of certain additional EROS-formative service marks, including EROS MEN and EROSTOYS.

Complainant alleges rights in the service marks EROS ESCORTS and THE ULTIMATE GUIDE TO EROS ESCORTS based on use in commerce on the Internet since at least as early as 2003, with registration of the <erosescorts.com> domain name in 2001. Complainant argues that its application for registration of the EROS ESCORTS service mark in October 2007 “clearly establish[es] their federal rights in the EROS ESCORTS Mark”…”[b]y preceding Respondent’s registration [of the disputed domain name] by first undertaking the trademark filings.”

Complainant contends that the disputed domain name is confusingly similar to the EROS marks, including but not limited to the EROS ESCORTS mark. Complainant argues that Respondent’s insertion of the term “adult” between EROS and ESCORTS to create the disputed domain name does not distinguish Respondent’s term from Complainant’s marks, and in fact heightens the likelihood of confusion because “adult” is a term that would be expected to be used with Complainant’s marks.

Complainant states that it has invested millions of dollars to publicize its marks, and that its marks are internationally known in the field of “providing Internet guides or directories to adult entertainers and related adult themed goods and services”.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. According to Complainant, (1) it has not authorized Respondent to use its marks, (2) Respondent has not been commonly known by the disputed domain name, (3) Respondent has not used its marks for a bona fide offer of goods or services prior to notice of a dispute because, inter alia, Respondent must have been aware of Complainant’s marks when it registered the disputed domain name and is misusing Complainant’s marks, and (4) Respondent is not making a legitimate noncommercial or fair use of Complainant’s marks in the disputed domain name.

Complainant alleges that Respondent registered and has used the disputed domain name in bad faith, principally because Respondent is attempting to attract Internet users to its website for commercial gain by creating confusion as to Complainant acting as source, endorser, sponsor or affiliate of Respondent’s website. Complainant further argues that Respondent’s bad faith is evidenced by Respondent’s deceptive solicitation of Complainant’s advertisers, and Respondent’s provision of false contact information (taken in its context). Complainant indicates that Respondent must have known of Complainant’s marks when it registered the disputed domain name, and that it is deliberately seeking to unfairly take advantage of Complainant’s goodwill.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

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

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The case file transmitted by the Center to the Panel includes a courier tracking record showing that the express courier service attempted to deliver the Complaint and other documents to Respondent, including on the basis of a request for a future delivery date received from Respondent. However, the express courier service ultimately returned the documents to the Center, indicating that its efforts to make delivery had failed. Emails sent from the Center (and Complainant) to the only email address provided by Respondent were met with an automated email response which indicated that a reply would follow, but Respondent did not reply further to the Center (or Complainant). The telephone contact number provided by Respondent in its record a registration was obviously inoperable (555-555-5555). The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. Respondent has evidenced a deliberate intent to avoid responding to contact efforts by the Center (and Complainant). The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided substantial evidence of rights in the service marks EROS, EROS GUIDE, EROS MEN and EROSTOYS based on use in commerce, and as evidenced by registration on the Principal Register of the USPTO (see Factual Background supra). Registration on the Principal Register establishes a presumption of rights in the aforesaid service marks, and Respondent has not disputed Complainant’s assertion of rights. The Panel determines that Complainant has rights in the service marks EROS, EROS GUIDE, EROS MEN and EROSTOYS.

Complainant further alleges rights in the service mark EROS ESCORTS. Complainant has provided evidence of current use of the term “eros escorts” as a domain name address for a website headed by that term, and has indicated that this usage was initiated at least as early as 2001 (or 2003). The Panel notes, however, that according to the USPTO TARR database, Complainant’s three applications filed on October 23, 2007 for registration of the term EROS ESCORTS are “intent-to-use” applications (filed pursuant to 15 U.S.C. §1051(b)). The applications have not yet been published. No Statements of Use have been filed by Complainant. As noted earlier, the USPTO on March 4, 2008 issued non-final actions regarding Complainant’s applications. Although these non-final actions do not preclude subsequent registration of the EROS ESCORTS service marks (depending on Complainant’s responses), it is clear that no registrations have yet taken place. Although a presumption of use dating back to the filing date of the applications would arise following the grant of registrations (pursuant to 15 U.S.C. §1057(c)), no such presumptions have as yet arisen.

Complainant has not provided direct evidence of use of the EROS ESCORTS service marks dating back prior to the applications submitted to the USPTO. Because Complainant benefits from no presumptions based upon these applications for registration, the Panel is unwilling to conclude that Complainant enjoys federal common law service mark rights in EROS ESCORTS. The direct evidence Complainant has provided as to use of “eros escorts” as a domain name and web site heading is a computer screen printout dated January 7, 2008. This does not represent usage sufficient to establish common law rights.

The Panel must determine whether the disputed domain name, <erosadultescorts.com>, is confusingly similar to Complainant’s EROS, EROS GUIDE, EROS MEN and EROSTOYS marks.

The term “eros” has a meaning as “the Greek god of erotic love”. It is also a term used to refer to life-preserving instincts.¹ The USPTO has granted service mark rights to Complainant for use of that term standing alone, and for use in the combinations referenced above. Taken in the context used by Complainant specifically, the term “eros” may be characterized as descriptive. It is being used by Complainant to identify the type of information available from its web-based businesses. The USPTO has made a determination that EROS is not generic or commonly descriptive by registering the term standing alone as a service mark, and Respondent has not challenged that determination. The Panel accepts that determination for purposes of this proceeding. As used by Complainant, the term EROS is not, standing alone, generic or commonly descriptive of the services offered by Complainant’s business. The term EROS may, and in this case does, serve a trademark function.

The terms with which Complainant has combined “eros”, that is, “guide”, “men” and “toys”, are common descriptive or generic terms. EROS is the dominant part of each of Complainant’s combination marks. Complainant essentially argues that it has established a family of “EROS”-formative marks, and that the disputed domain name <erosadultescorts.com> is confusingly similar to Complainant’s family of marks, each incorporating “eros” as the dominant part. In the particular circumstances of this proceeding, the Panel is inclined to accept Complainant’s argument. Complainant appears to be well established as a provider of adult entertainment services under the “eros” name. The disputed domain name, <erosadultescorts.com>, is confusingly similar to “eros”, Complainant’s mark standing alone, and to that term when used in dominant combination in the marks EROS GUIDE, EROS MEN and EROSTOYS. An Internet user familiar with Complainant’s family of marks would likely assume that a website identified by “www.erosadultescorts.com” is owned, affiliated with, sponsored or endorsed by Complainant.

The Panel’s determination regarding confusing similarity is reinforced by Respondent’s deliberate attempt to take advertising clients away from Complainant by falsely representing itself as Complainant to Complainant’s customers, using “Eros Adult Escorts” as its name in these solicitations. Respondent believed that the disputed domain name was sufficiently similar to Complainant’s marks to give rise to confusion among persons with experience in the relevant field.

The Panel determines that Complainant has rights in EROS, EROS GUIDE, EROS MEN and EROSTOYS as service marks, and that the disputed domain name is confusingly similar to those marks.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.” (Policy, paragraph 4(c))

Respondent has not been authorized by Complainant to use its EROS service marks. There is no evidence to show that Respondent has been commonly known by the disputed domain name.

Respondent is using the disputed domain name and Complainant’s service mark(s) to direct Internet users to a web portal providing links to adult entertainment services directly competitive with those offered by paid advertisers on and/or linked to Complainant’s website. Respondent is essentially using Complainant’s marks to operate an Internet service business directly competitive with that of Complainant. The evident purpose for using Complainant’s service marks is to misleadingly draw Internet users to Respondent’s website. This does not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548.

Respondent’s use of the disputed domain name is plainly not “noncommercial”. Although the term “eros” in the disputed domain name has a meaning associated with sexual activity, the term is not so adjectivally descriptive of the provision of web-based adult entertainment services that Respondent’s use is justified as a fair descriptive use.

Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [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 [respondent’s] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)).

The Panel finds Respondent has used the disputed domain name, which is confusingly similar to Complainant’s service marks, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Particularly in light of Respondent’s efforts to misleadingly divert Complainant’s advertising customers to Respondent, it is reasonable to infer that Respondent adopted the disputed domain name with the specific intention of taking advantage of the goodwill established by Complainant in its service marks. Respondent is seeking the same advertising clients as Complainant, and the same Internet user customers for those clients. Respondent is acting for commercial gain. Such use of the disputed domain name constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has satisfied each of the three elements necessary for a finding of abusive domain name registration and use within the meaning of the Policy.

 

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, <erosadultescorts.com>, be transferred to the Complainant.

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Frederick M. Abbott
Sole Panelist

Dated: March 11, 2008

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¹ See Merriam-Webster Online Dictionary, http://www.merriam-webster.com/dictionary/eros, panel visit of March 9, 2008.