WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc.v. DMFAK, Inc

Case No. D2005-0135

1. The Parties

The Complainants are Group Kaitu, LLC and its licensee, Darkside Productions, Inc., both of Oakland, California, United States of America, represented by Gavin Law Offices, PLC, United States of America.

The Respondent is DMFAK, Inc., Fort Lauderdale, Florida, United States of America, represented by Randall L. Leshin, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <erosargentina.com>, <eros-colombia.com>, <eros-costa-rica.com>, <eros-costarica.com>, <eroscostarica.com>, <eros-cuba.com>, <eros-florida.net>, <erosflorida.net>, <eros-fort-lauderdale.com>, <erosfort-lauderdale.com>, <erosfortlauderdale.com>, <eros-ft-lauderdale.com>, <eros-ftlauderdale.com>, <erosftlauderdale.com>, <eros-latina.com>, <eros-latin.com>, <eros-south-florida.com>, <eros-southflorida.com>, <erossouthflorida.com>, <eros-venezuela.com>, <erosvenezuela.com>, <florida-eros.net>, <floridaeros.net>, <ft-lauderdale-eros.com>, <ft-lauderdaleeros.com>, <latina-eros.com>, <latin-eros.com>, and <miami-eros.net> (the “Domain Names”) are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2005. On February 8, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Names at issue. On February 8, 2005, and February 10, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Complainants filed an amendment to the Complaint on February 9, 2005. The Center verified that the Amended 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Response was filed with the Center on March 1, 2005.

The Center appointed Carol Anne Been as the Sole Panelist in this matter on March 10, 2005. The Panel finds that the proceeding 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.

Respondent submitted supplemental materials to the Center for inclusion in these proceedings on March 10, 2005. On March 11, 2005, the Center informed the Parties that such supplemental filings would be used only at the discretion of the Panel. The Panel elected to receive, review and consider these supplemental filings to reach its decision.

4. Factual Background

The facts as presented in the Complaint and Response are as follows. Group Kaitu is the owner of several federally registered trademarks, including the EROS mark, that are used by Complainants Group Kaitu and Darkside Productions, Inc., a licensee of Group Kaitu, in connection with Internet guides to adult entertainment. Group Kaitu and Darkside Productions, Inc. are hereinafter referred to as “Complainants.”

Group Kaitu, owns the following trademarks registered in the United States:

- EROS GUIDE (Registration No. 2,549,369 registered March 19, 2002) (claiming first use in August 1997), for dissemination of advertising for the goods and services of others via the global computer network.

- EROS (Registration No. 2,793,831 registered December 16, 2003) (claiming first use on August 24, 1997), for an online portal linked to other related and unrelated websites in the field of adult-themed services and entertainment; and

- EROS (Registration No. 2,794,843 registered December 16, 2003) (claiming first use on November 16, 2002), for providing dissemination of advertising for the goods and services of others via the global computer network; providing online database, directory; and search engine services to facilitate access to adult themed products and services via the global computer network; providing online shopping service featuring the retail and wholesale distribution of adult themed products and services via the global computer network.

Complainants claim combined ownership of over 1,100 domain names, the vast majority of which contain Group Kaitu’s marks, EROS or EROS GUIDE, in conjunction with a generic word that specifies a country, state, region, city or other geographical area, or an ethnicity. The domain names held by the Complainants lead to websites containing references for escorts, entertainers, events, and other adult themed entertainment for a given geographic region. Group Kaitu claims to have operated, either itself or through its licensees, such sites under its EROS mark since at least as early as 1997 and continuously since then to the present.

Respondent registered the 28 Domain Names at issue between September 13, 2004, and October 13, 2004. Complainants allege, and Respondent does not deny, that at one time most of the Domain Names led to websites containing references for escorts, entertainers, classified advertisements and other information resources for adult entertainment, as shown by printouts of three such sites attached to the Complaint. The Domain Names are currently parked and do not resolve to websites. Respondent references at least one offer to sell the Domain Names to Complainants at cost. The Complaint does not address this contention.

Subsequent to the filing of the Complaint, Respondent filed a Notice of Opposition to Group Kaitu’s application to register the trademark EROS for “providing online publications via the global computer network, namely online magazines with subject matter related to adult entertainment and other adult-themed topics”, with the United States Patent and Trademark Office. To date, the Opposition is pending.

5. Parties’ Contentions

A. Complainants

Complainants assert that Group Kaitu’s marks, EROS and EROS GUIDE, are internationally known for providing Internet guides and directories to adult entertainment and related services. Complainants assert that the Domain Names are similar to its rights and Group Kaitu’s marks.

Complainants assert the only difference between Respondent’s Domain Names and Group Kaitu’s marks is the addition of a non-distinctive geographic identifier. Complainants further contend that addition of a geographic identifier to Group Kaitu’s EROS mark is the regular pattern used in Complainants’ domain names.

Complainants contend that Respondent is not known by the Domain Names and engaged in opportunistic registration of the Domain Names that are derivative of Complainants’ domain names and Group Kaitu’s marks. Thus, Complainants contend that Respondent has no rights or legitimate interests in the Domain Names.

Complainants further contend that Respondent registered and used the Domain Names in bad faith for the purpose of disrupting the business of Complainants and diverting Internet users to Respondent’s competitive websites. Complainants assert that the currently parked Domain Names are being warehoused for later diversionary activity by Respondent.

B. Respondent

Respondent alleges that the Domain Names are not identical or confusingly similar to Group Kaitu’s marks because other uses of the term Eros predate and coexist with Complainants’ use. Respondent refers to the Greek god of love, Eros, and other businesses that use the name Eros. In particular Respondent identifies three unrelated websites that use the name Eros: “eros.com.au”; “erosboutique.com”; and “erosenterprises.com”.

Apart from the foregoing, Respondent has offered no other evidence of rights or legitimate interest in the Domain Names. Respondent contends that its offer to sell the Domain Names to Complainants at cost demonstrates lack of bad faith. Respondent further contends that its acquisition of the Domain Names was unintentional and somehow related to alleged hijacking of its accounts. Respondent does not deny its ownership of the Domain Names and contends that it has the right to own and use the Domain Names.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that Complainants 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 Complainants have rights;

(ii) that Respondent has no legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and used in bad faith:

To prevail, Complainants must establish each of the foregoing elements, which are separately addressed below.

A. Identical or Confusingly Similar

Group Kaitu owns three federal trademark registrations for the EROS and EROS GUIDE marks, and has used, either itself or through licensees like Darkside Productions, the EROS and EROS GUIDE marks for websites in the field of adult-themed entertainment services for almost eight years. These undisputed facts raise a strong presumption of distinctiveness of Group Kaitu’s marks. The fact that Eros is the name of a Greek god, or that other companies use the name Eros in marks for non-competitive products or services, does not prevent Group Kaitu from acquiring rights in Eros as its trademark or competitive uses from being confusingly similar thereto.

Respondent has identified three websites with domain names that include the word Eros, two of which Respondent claims were in existence prior to creation of Group Kaitu’s marks and Complainants’ sites. Respondent claims that these sites show that Respondent’s domain names are not confusingly similar to Group Kaitu’s EROS mark. Neither Complainants nor Respondent provided the Panel with further information about these sites. The Panel independently visited the websites at the three domain names identified by Respondent. In the opinion of the Panel, none of the three sites is competitive with the services offered through Complainants’ websites. The website at “erosboutique.com” displays a web-based store offering adult toys and products. The website at “erosenterprises.com” offers photography and graphic design services. The website at “eros.com.au” is for Australia’s adult trade association which is directed to providers of adult products and services rather than consumers. Because of the differences in the nature of the sites from Complainants’ services, these sites do not impact Group Kaitu’s rights in its marks. Unlike those sites, the services for which Respondent used the Domain Names are similar to Complainants’ services.

Each of the Domain Names incorporates Group Kaitu’s EROS mark in conjunction with an additional identifier, either geographic or ethnic. In some cases the geographic identifier is the same as that used in Complainants’ domain names, and only the punctuation or word order is changed, as the following chart provided by Complainants illustrates:

Annex 4 to Complaint (note that the chart omits 7 additional Domain Names at issue).

The addition of a geographical or ethnic identifier or change in punctuation or word order does not defeat the similarity created by use of Group Kaitu’s mark in the Domain Names. The Domain Names all use Group Kaitu’s registered mark and follow the format used by Complainants in establishing domain names. See, e.g., Six Contents [sic] Hotels, Inc. v. eGo, Case No. D2003-0341 (July 3, 2003); House of Blues Brands Corp. v. Lost in Space, SA, Case No. D2002-0398 (June 24, 2002).

Thus, the Panel holds that the Domain Names are confusingly similar to the Complainant Group Kaitu’s EROS marks.

B. Rights or Legitimate Interests

Respondent is not commonly known by the name Eros. Although not decisive, it is also worth noting that the Respondent had constructive notice of Group Kaitu’s federal trademark registrations under 15 U.S.C. §1072, and Group Kaitu, or its licensees, had used its marks and related domain names for adult entertainment websites for many years before Respondent registered or used the Domain Names for similar services. There is no evidence in the record of any rights or legitimate interest of Respondent in the EROS marks or in the Domain Names at issue.

Thus, the Panel holds that Respondent has no rights or legitimate interests in the Domain Names.

C. Registered and Used in Bad Faith

Respondent does not currently use the Domain Names for active websites. The Complaint alleges, and Respondent does not deny, that prior to the filing of the Complaint, most of the Domain Names resolved to active websites containing content that was competitive with Complainants’ websites. Respondent’s choice of these 28 Domain Names, and their similarity to Group Kaitu’s marks and Complainants’ domain names as shown on the chart above, does not appear to be fortuitous. Many of the Domain Names could be considered typosquatting, as web users might inadvertently type the Domain Names in place of Complainants’ domain names. When Respondent’s Domain Names were active, or if they become active again in the future, the Domain Names would divert web users to Respondent’s websites which are competitive with Complainants’ websites.

Based on the evidence presented, Respondent had no good faith reason to register the Domain Names. See e.g., Produits Berger v. Standard Project Limited, Case No. D2002-0518; Yahoo! Inc. v. Eitan Zviely, et al., Case No. D2002-0273; Darkside Production and Group Kaitu, LLC v. Eros International Corporation, Case No. D2003-0065. Respondent used Complainant Group Kaitu’s mark in the Domain Names “to attract, for commercial gain, Internet users to [Respondent’s] website … by creating a likelihood of confusion with [Complainant’s] mark”. Policy, paragraph 4(b)(iv). Thus, the Panel holds that Respondent has registered and used the Domain Names in bad faith.

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, <erosargentina.com>, <eros-colombia.com>, <eros-costa-rica.com>, <eros-costarica.com>, <eroscostarica.com>, <eros-cuba.com>, <eros-florida.net>, <erosflorida.net>, <eros-fort-lauderdale.com>, <erosfort-lauderdale.com>, <erosfortlauderdale.com>, <eros-ft-lauderdale.com>, <eros-ftlauderdale.com>, <erosftlauderdale.com>, <eros-latina.com>, <eros-latin.com>, <eros-south-florida.com>, <eros-southflorida.com>, <erossouthflorida.com>, <eros-venezuela.com>, <erosvenezuela.com>, <florida-eros.net>, <floridaeros.net>, <ft-lauderdale-eros.com>, <ft-lauderdaleeros.com>, <latina-eros.com>, <latin-eros.com>, and <miami-eros.net>, be transferred to the first Complainant Group Kaitu, LLC.

Carol Anne Been
Sole Panelist

Dated: April 5, 2005