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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Darkside Productions, Inc. et al. v. Joe Peterson

Case No. D2008-0955

1. The Parties

Complainants are Darkside Productions, Inc., a California corporation located in Oakland, State of California, United States of America and Group Kaitu LLC, a Delaware limited liability company located in Oakland, State of California, United States of America (“Complainants”).

Respondent is Joe Peterson (“Respondent”), an individual located in New York City, the State of New York, United States of America

2. The Domain Name and Registrar

The domain name at issue is <erosnewyork.com> (the “Disputed Domain Name”) and the registrar is Network Solutions, LLC. (the “Registrar”)

3. Procedural History

On June 23, 2008, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint from Complainants via email. On June 26, 2008, the Center received the original and four hardcopies of the Complaint. On June 27, 2008 the Center sent an Acknowledgment of Receipt of Complaint to Complainants and Respondent. Complainants paid the required fee.

On June 24, 2008 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Disputed Domain Name and that the Disputed Domain Name is registered in Respondent’s name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On July 3, 2008, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondent together with copies of the Complaint, with a copy to Complainants. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 25, 2008, the Center advised Respondent that he was in default for failing to file his Response. No Response has been received.

On August 1, 2008, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single- panelist comprising the Panel.

4. Factual Background

Darkside Productions, Inc. (“Darkside”) and Group Kaitu LLC (“Kaitu”) are related entities (collectively “Complainants”). By written agreement, Kaitu owns all of Darkside’s service marks and domain names claimed herein and licenses them to Darkside for use in connection with the operation of various websites.

Kaitu is the owner of numerous United Sates of America (“United States”) service marks, including but not limited to EROS GUIDE, EROS, EROS MEN and EROSTOYS (the “EROS Marks”) relating primarily to online dating services, online shopping, and adult-themed products.

Since 1997, Darkside has been the owner and operator of websites located at “www.erosguide.com” and “www.eros-guide.com” at which it operates an Internet guide to adult entertainers world wide. Darkside owns and operates similar sites at “www.eros.com” and at many additional “EROS” websites. Since 1997, Darkside has expanded its products and service offerings under the EROS brand to include a wide variety of goods and services in the field of adult-themed entertainment.

Complainants registered the <eros-guide.com> and <erosguide.com> domain names on April 22, 1997 and April 29, 1997, respectively, and have since continuously operated them. Both sites feature use of the EROS Marks in connection with a variety of services in the field of adult-themed entertainment, including but not limited to advertising the services of adult entertainment service providers.

To implement its geographically focused provision of online directories of the service providers, Kaitu has also registered, owns and licenses to Darkside over 2,000 domain name containing the EROS Mark, over 200 of which feature the name of the states (as does Respondent’s Disputed Domain Name). Hereinafter, Complainant’s domain names related to the EROS Marks shall be referred to as the EROS Domains. Each such domain name is the Internet address for and directs users to a website which feature information related to, inter alia, Darkside’s guides and links to providers of adult–themed services which are physically located in or target the specific geographic regions and cities referenced in the domain name. For example, <eros-ny.com> resolves to Complainants’ website on which location New York advertisers and other advertisers targeting New York buy ad space.

5. Parties’ Contentions

A. Complainants’ contentions

i. Complainants contend that they have registrations of the EROS Marks, In addition Complainants allege that the EROS Marks are internationally known in the field of providing Internet guides or directories to adult entertainers and related adult-themed goods and services. Further, Complainants have invested millions of dollars publicizing and using the EROS Marks to ensure automatic identification with excellence in providing Internet guides to adult entertainers and related goods and services. Therefore, Complainants contend they enjoy common law trademark rights in EROS in addition to their registrations.

ii. Complainants argue that the Disputed Domain Name is confusingly similar to the EROS Marks, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the EROS mark with the addition of a geographic identifier. Complainants assert that Respondent’s addition of a mere geographical suffix to an EROS Mark does not alter the fact that Respondent’s Disputed Domain Name is confusingly similar to the EROS Marks. Complainants further assert that because Respondent directly competes with Complainants, Respondent obviously knew of, and copied Darkside’s business methodology of using geographic identifiers alongside the EROS Marks Thus, Respondent’s domain name is confusingly similar to Complainants’ EROS Marks.

iii. Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy, and that Respondent has failed to demonstrate any of the three circumstances that might constitute rights to or legitimate interests in the Disputed Domain Name. Complainants allege that the knowing use of the EROS Marks precludes the Respondent from offering any bona fide goods or services.

Complainants contend that Respondent cannot demonstrate rights or legitimate interest in the Disputed Domain Name under paragraph 4(c)(i) of the Policy because he has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Complainants contend that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy because he is not now or has ever been under either of the Disputed Domain Name. Respondent has no connection or affiliation with Complainants, and has not received any license or consent, express or implied, to use the EROS Marks in a domain name or in any other manner.

Complainants contend that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(iii) of the Policy because he is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainants allege that the knowing use of the EROS Marks precludes Respondent from offering any legitimate noncommercial use.

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Complainants argue that the elements of Respondent’s bad faith are set forth in paragraph 4(b)(iv) of the Policy which states that Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainants’ EROS Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.

B. Respondent’s contentions

Respondent has chosen not to file a response or otherwise respond to the allegations in the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, S.a.S., NAF Case No. FA94637; David G. Cook v. This Domain is For Sale, NAF Case No. FA94957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA94925.

Even though Respondent has failed to file a Response or to contest Complainants’ assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainants contend that they have registrations of the EROS Marks, In addition Complainants allege that the EROS Marks are internationally known in the field of providing Internet guides or directories to adult entertainers and related adult-themed goods and services. Further, Complainants have invested millions of dollars publicizing and using the EROS Marks to ensure automatic identification with excellence in providing Internet guides to adult entertainers and related goods and services. Therefore, Complainants’ enjoy common law trademark rights in EROS in addition to their registrations.

The Panel finds that for purposes of this proceeding Complainants have shown prima facie evidence of their ownership and the validity of the EROS Marks which Respondent has chosen not to contest. Therefore, the Panel finds that Complainants, for purposes of this proceeding, have enforceable rights in the EROS Marks.

Identity or Confusing Similarity

Complainants further contend that the Disputed Domain Name is identical with and confusingly similar to the EROS Marks pursuant to the Policy paragraph 4(a)(i).

Complainants argue that the Disputed Domain Name is confusingly similar to the EROS Marks, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the EROS Mark with the addition of a geographic identifier. Complainants assert that Respondent’s addition of a mere geographical suffix to the EROS Marks does not alter the fact that Respondent’s Disputed Domain Name is confusingly similar to the EROS Marks. Because Respondent directly competes with Complainants, Respondent obviously knew of, and copied Darkside’s business methodology of using geographic identifiers alongside the EROS Marks. Thus, the Respondent’s Disputed Domain Name is confusingly similar to Complainants’ EROS Marks.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the trademark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar, Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in a domain name does not generally affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the use of geographic identifiers in the EROS Marks and Domains is common and does not create any distinctive content within the Disputed Domain Name.

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the EROS Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainants to prove that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainants have alleged that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name. Complainants argue that the knowing use of the EROS Marks precludes Respondent from offering any bona fide goods or services under paragraph 4(c)(i) of the Policy.

Complainants further allege that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy because he is not now or has ever been know by the Disputed Domain Name. Respondent has no connection or affiliation with Complainants, and has not received any license or consent, express or implied, to use the EROS Marks or Domains in a domain name or in any other manner.

Complainants further allege that Respondent cannot demonstrate rights or legitimate interests in the Disputed Domain Name under paragraph 4(c)(iii) of the Policy because he is knowingly violating Complainants’ rights which cannot constitute a legitimate noncommercial or fair use of the Disputed Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

Complainants have sustained their burden of proving that Respondent lacks rights to or legitimate interests in the Disputed Domain Name. Respondent has chosen not to refute any of the allegations made by Complainants under paragraph 4(a)(ii) of the Policy.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainants contend that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). Complainants allege that the actions of Respondent meet the criteria of paragraph 4(b)(iv) of the Policy. Complainants allege that by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites or other on-line locations, by creating a likelihood of confusion with the Complainants’ EROS Marks and Domains.

Respondent has elected not to contest these allegations. Therefore, Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

7. Decision

The Panel concludes (a) that the Disputed Domain Name <erosnewyork.com> is confusingly similar to Complainants’ registered and common law rights in the EROS Marks, (b) that Respondent has no rights or legitimate interest in the Disputed Domain Name and (c) that Respondent registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <erosnewyork.com> be transferred to Complainants.

Richard W. Page
Sole Panelist

Dated: August 20, 2008