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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Darkside Productions Inc. v. Whois Guard Protected

Case No. D2008-0263

1. The Parties

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

The Respondent is Whois Guard Protected, of Westchester, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <hqerosescorts.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2008. On February 21, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On February 22, 2008, eNom, 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 February 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2008.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 25, 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.

By email dated April 6, 2008, the Panel notified the Center that due to exceptional circumstances it was extending the due date for submission of its decision in this matter from April 8 to April 11, 2008.

4. Factual Background

This sole panelist recently rendered a determination in a proceeding initiated by the Complainant in this proceeding (see Darkside Productions, Inc.; Group Kaitu, LLC v. Eros Adult Escorts, WIPO Case No. D2008-0078, decision dated March 11, 2008). Certain factual determinations with respect to Complainant in this proceeding are substantially similar to those made in that earlier determination.

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. 2,793,831, dated December 16, 2003, in international class (IC) 41, covering “[p]roviding links to the websites of others in the field of adult-themed entertainment”; Registration No. 2,794,843, dated December 16, 2003, in ICs 42 & 35, covering, inter alia, “providing customized online web pages featuring user-defined information”; Registration No. 3,134,894, 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. 2,549,369, 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). (Complaint, Exhibit 2) Complainant asserts a pending service mark application at the USPTO for EROS ESCORTS (Id., para. 14). Complainant in the instant proceeding has failed to provide hardcopy support for this claimed application. Because of inconsistencies between information developed in the Panel’s inquiry regarding similarly asserted applications in an earlier proceeding involving Complainant (see WIPO Case No. D2008-0078, supra) and the claim asserted by Complainant in the instant proceeding (see discussion below), and because Complainant has not attempted to explain those inconsistencies, the Panel does not consider claims relying on the presently asserted EROS ESCORTS application as being adequately substantiated.

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 ninety-one (91) EROS-formative domain names (Complaint, Exhibit 5), 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 3-4 & 6)

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 million dollars promoting its web-based businesses identified by its EROS and EROS-formative service marks.

In connection with an earlier proceeding (see WIPO Case No. D2008-0078, supra), the Panel queried the USPTO Trademark Application and Registration Retrieval System with respect to the status of Complainant’s then-alleged applications for EROS ESCORTS (Panel visits of March 9-10, 2008) (application Serial Nos. 77/311,350, 77/311,038 & 77/311,055, each filed on October 23, 2007). Each of those 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 those three pending applications. The USPTO Office Actions raised certain questions with respect to similarity of prior registered marks of third parties and Complainant’s identification of lines of commerce. In the instant proceeding, Complainant has alleged a different application number for EROS ESCORTS and, because it asserts a claimed date of first use, presumably a different form of application. However, because Complainant has not provided a hard copy printout of such application nor explained the apparent inconsistency with its other EROS ESCORTS applications, the Panel disregards this asserted application as inadequately substantiated.¹

According to the Registrar’s Verification report, Respondent “Whois Guard Protected” is registrant of the disputed domain name <hqerosescorts.com>. According to GoDaddy.com Whois database printout provided by Complainant, the record of registration of the disputed domain name was created on April 1, 2007.

The disputed domain name <hqerosescorts.com> has been used by Respondent to direct Internet users to a website captioned with “HQ ErosEscorts.com”. Underneath “HQ” in the caption are the words “High Quality”. Underneath the caption, the homepage states, “Here at the Eros Escorts directory we thrive to keep you updated and informed of all the latest information on independent escorts, agencies and all of their great services they provide. We ONLY supply you with the highest quality escort that can all be seen in our massive directory. In our escort database you will find over 21,000 independent escorts and agencies. Because of the size of our directory we have sorted everything out into states so there’s no need to waste time browsing through escorts that aren’t even in your state … Whilst searching our directory you will notice that besides just pictures we also list phone numbers, e-mail addresses and all the details required for you to contact them easily …” There is a “click here to read our blog” link on the homepage which directs Internet users to sexually explicit discussion and photographs with respect to the service providers linked through Respondent’s website. There is also a “click here for live feeds” link that directs Internet users to video windows of “personal page[s]” offering “private show[s]”. Additional links direct Internet users to third-party agencies that promote sexually oriented escort services. (Complaint, Exhibit 7)

The Registration Agreement in effect between Respondent and eNom, Inc. 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 indicates that it has used that service mark since 2003 and, “Complainants have sufficiently established their common law rights in the marks EROS ESCORTS and THE ULTIMATE GUIDE TO EROS ESCORTS due to their extensive use of the marks in commerce approximately five years prior to the date hereof and their use and ownership of the <erosescorts.com> domain name featuring the EROS mark for approximately seven years prior to the date hereof”.

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 “hq” before “erosescorts” to create the disputed domain name does not distinguish Respondent’s term from Complainant’s marks, inter alia, because the letters “HQ” are commonly used to refer to “headquarters”.

Complainant argues that the disputed domain name is confusingly similar to its family of marks.

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 the fact that it was aware of Complainant and its business when it registered the disputed domain name,

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 Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email and express courier to the addresses provided in its registrar-confirmed record of registration. The case file indicates that attempts to reach Respondent by available means including fax and courier were unsuccessful, and that the courier’s attempted delivery was refused by Respondent. Because Respondent appears to be a domain name privacy shield enterprise, and because there has been no response in this proceeding from that enterprise, neither the Center nor the Panel can further determine whether there is, or the identity of, an additional third-party “in interest” with respect to Respondent. The Panel does not draw a negative factual inference from Respondent’s use of a privacy shield in its domain name registration. However, Respondent bears the risk associated with re-transmission of communications by its privacy provider.

The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. 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.

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. Moreover, 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). In a recent proceeding decided by this sole panelist, WIPO Case No. D2008-0078, supra, Complainant relied upon three pending “intent-to-use” applications as evidence for common law service mark rights in EROS ESCORTS. In this proceeding, Complainant has made reference to a different pending service mark application allegedly claiming September 28, 2003 as its date of first use in commerce, but has not provided hardcopy evidence of that application. Complainant did not in the earlier proceeding provide, and it has not here provided direct evidence of use of the EROS ESCORTS service marks dating back prior to its recent service mark applications. The direct evidence Complainant has provided for use of “eros escorts” as a domain name and website heading in this proceeding is a computer screen printout dated February 14, 2008 (Complaint, Exhibit 6). This does not represent usage sufficient to establish common law rights. Complainant benefits from no presumptions based upon applications for registration. The Panel is unwilling to conclude that Complainant enjoys federal common law service mark rights in EROS ESCORTS.

The Panel must determine whether the disputed domain name, <hqerosescorts.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.² 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 its EROS mark, namely, “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 <hqerosescorts.com> is confusingly similar to Complainant’s family of marks, each incorporating EROS as the dominant part. Complainant asserts that the initials “hq” are commonly associated with the term “headquarters”, referring to Merriam-Webster’s Online Dictionary, which indicates that “HQ” functions as an abbreviation for “headquarters”.³ Complainant asserts that an Internet user seeing the disputed domain name <hqerosescorts.com> would likely assume that it referred to the headquarters of Complainant’s escort service business. Complainant further asserts that if an Internet user did not specifically associate “hq” with “headquarters” that user would still be confused by the incorporation of Complainant’s service mark in the disputed domain name. The fact that Respondent uses the letters “hq” as an abbreviation for “High Quality” on its website does not ameliorate potential confusion, but rather may exacerbate confusion as Internet users seeking escort services promoted by Complainant would expect to find the words “High Quality” associated with those services.

Confusing similarity between a trademark and domain name is determined by examining the sight (visual impression), sound and meaning of the terms being compared. The Panel considers that adding the letters “hq” before Complainant’s EROS mark in the disputed domain name suggests identification of Complainant’s headquarters, or otherwise adds a somewhat confusing two-letter preface to Complainant’s service mark.⁴ EROS continues to function as the dominant term in the disputed domain name, and retains the meaning associated with Complainant’s service mark. The Panel further notes that Respondent reinforces Internet user confusion on its website portal associated with the disputed domain name by visually separating “HQ” from “ErosEscorts.com”, and by further defining “HQ” as the adjectival phrase “High Quality”. It emphasizes “Eros Escorts”, which is confusingly similar to Complainant’s family of EROS- formative marks. Complainant appears to be well established as a provider of adult entertainment services under the EROS mark, and holds registrations for the terms EROS, 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.hqerosescorts.com” is owned, affiliated with, sponsored or endorsed by Complainant.

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 one or more of 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. In light of Complainant’s prominence in its field of commercial activity, it is reasonable to infer that Respondent registered and is using 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, <hqerosescorts.com> be transferred to the Complainant.

Frederick M. Abbott
Sole Panelist

Dated: April 11, 2008