WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Darkside Productions, Inc. and Group Kaitu, LLC v. Practical Growth, Inc.
Case No. D2007-1755
1. The Parties
Complainants are Darkside Productions, Inc. (“Darkside”), and Group Kaitu, LLC (“Kaitu”), of Oakland, California, United States of America, represented by Gavin Law Offices, PLC, of Richmond, Virginia, United States of America.
Respondent is Practical Growth, Inc., of Aventura, Florida, United States of America, represented internally by Steven Brier.
2. The Domain Names and Registrars
The disputed domain names <atlantaerosguide.com>, <bostonerosguide.com>, <dallaserosguide.com>, <denvererosguide.com>, <erossexguide.com>, <lasvegaserosguide.com>, <nashvilleerosguide.com>, <nycerosguide.com>, <philadelphiaerosguide.com>, <phoenixerosguide.com>, <portlanderosguide.com>, <sandiegoerosguide.com>, <seattleerosguide.com>, and <washingtondcerosguide.com> are registered with Fabulous.com Pty Ltd (“Fabulous”).
The disputed domain names <chicagoerosguide.com>, <houstonerosguide.com>, <miamierosguide.com>, <newyorkerosguide.com>, and <stlouiserosguide.com> are registered with UDomainName.com LLC (“UDomainName”).
The above-listed 19 domain names are referred to collectively hereafter as “the Disputed Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2007. On November 29, 2007, the Center transmitted by e-mail to Fabulous and UDomainName a request for registrar verification in connection with the Disputed Domain Names. On November 30, 2007, Fabulous.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 5, 2007, UdomainName transmitted by e-mail to the Center its verification response stating that the registrant of the domain names <chicagoerosguide.com>, <houstonerosguide.com>, <miamierosguide.com>, <newyorkerosguide.com>, and <stlouiserosguide.com> is “[email protected] / Practical Growth, Inc.” and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 6, 2007. The Center verified that the Complaint together with the amendment to 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 December 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2008. The Response was filed with the Center on December 12, 2007.
On December 18, 2007, Respondent sent an e-mail to the Center regarding “more clarifications”, to which Complainant submitted a response via e-mail to the Center on December 20, 2007, followed by yet another e-mail from Respondent to the Center on December 21, 2007. Collectively, these e-mails are referred to hereafter as the parties’ “Supplemental Filings”.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 18, 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
Complainants state that Darkside and Kaitu are related entities and that, by written agreement, Kaitu owns all of Darkside’s service marks and domain names claimed in the Complaint and licenses them to Darkside for use in connection with the operation of various websites. Complainants further state that, since 1997, Darkside has been the owner and operator of website guides to adult entertainers worldwide, located at <erosguide.com> and <eros-guide.com> and that Darkside owns and operates a similar website at <eros.com> and at many additional websites containing the EROS mark – “many of which feature the name of a geographic area such as a city or state”.
Complainants state – and provide evidence in support thereof – that Kaitu is the owner of four federal trademark registrations in the United States of America that contain the mark EROS, as set forth below:
- EROS GUIDE (U.S. Reg. No. 2,549,369) (filed June 26, 2000, and registered March 19, 2002) (claiming a date of first use in commerce of August 1997), for use in connection with the “dissemination of advertising for the goods and services of others via the global computer network”.
- EROS (U.S. Reg. No. 2,793,831) (filed April 24, 2002, and registered December 16, 2003) (claiming a date of first use in commerce of August 24, 1997), for use in connection with “providing links to the websites of others in the field of adult-themed entertainment”.
- EROS (U.S. Reg. No. 2,794,843) (filed December 9, 2002, and registered December 16, 2003) (claiming a date of first use in commerce of November 16, 2002) for use in connection with “providing customized on-line web pages featuring user-defined information, which includes search engines and on-line web links to other adult themed websites” and providing dissemination of advertising for the goods and services of others via the global computer network; providing on-line directory information services also featuring hyperlinks to other websites; promoting the goods and services of others by providing a website at which users can link to the adult-themed websites of others; promoting the goods and services of others by means of operating an on-line shopping mall with links to the adult-themed retail websites of others; providing online shopping service featuring adult themed products and services via the global computer network”.
- EROS (U.S. Reg. No. 3,134,894 (filed April 16, 2004, and registered on August 29, 2006) (claiming a date of first use in commerce of November 11, 2001) for use in connection with “providing online publications via the global computer network, namely online magazines with subject matter related to adult entertainment and other adult-themed topics”.
Collectively, the above registrations are referred to hereafter as the “EROS Trademarks”.
Each of the Disputed Domain Names was created on the dates set forth below:
- <atlantaerosguide.com>: October 13, 2007
- <bostonerosguide.com>: October 13, 2007
- <chicagoerosguide.com>: May 18, 2006
- <dallaserosguide.com>: October 13, 2007
- <denvererosguide.com>: October 13, 2007
- <erossexguide.com>: October 13, 2007
- <houstonerosguide.com>: May 31, 2006
- <lasvegaserosguide.com>: October 13, 2007
- <miamierosguide.com>: May 18, 2006
- <nashvilleerosguide.com>: October 13, 2007
- <newyorkerosguide.com>: May 18, 2006
- <nycerosguide.com>: October 13, 2007
- <philadelphiaerosguide.com>: October 13, 2007
- <phoenixerosguide.com>: October 13, 2007
- <portlanderosguide.com>: October 13, 2007
- <sandiegoerosguide.com>: October 13, 2007
- <seattleerosguide.com>: October 13, 2007
- <stlouiserosguide.com>: May 31, 2006
- <washingtondcerosguide.com>: October 13, 2007
5. Parties’ Contentions
In addition to the factual background set forth above, Complaints contend, inter alia, as follows:
- Each of the Disputed Domain Names is identical or confusingly similar to the EROS Trademarks because each domain name includes one of the EROS Trademarks plus “a mere geographical suffix” or a “generic term”.
- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because Respondent is not authorized by Complainants to use the EROS Trademarks; Respondent is using each of the Disputed Domain Names in connection with “websites [that] contains links to adult-themed entertainment and services which directly compete with Complainants’ adult-themed websites and escort services”, a use that is neither bona fide nor a legitimate noncommercial or fair use; and “there is no evidence that Respondent has been commonly known as [any] of the [Disputed] Domain Names”.
- Each of the Disputed Domain Names has been registered and is being used in bad faith because, after Complainants purchased the domain name <stlouiseros.com> from Respondent in response to an advertised price of “$199.95 USD” (which “came to Complainant’s attention” on or about October 23, 2007) Respondent offered on November 24, 2007, to sell all of the Disputed Domain Names to Complainants “at a package price” – presumably at an “amount in excess of [Respondent’s] out of pocket costs to create profits”; “Respondent provides links to competing commercial services and, on information and belief, collects a fee or advertising revenues for these services”; and “Respondent has engaged in a pattern of conduct aimed at preventing Complainants from reflecting its trademarks in a domain”.
Respondent contends, inter alia, as follows:
- The Disputed Domain Names are not identical or confusingly similar to a trademark or service mark in which Complainants have rights because “Respondent chose the domain names in question and registered them consistent with the several thousand local domains it owns and should not be confusing with the registered trademarks because the registered trademarks have no local modifiers while the trademarks are generic terms in which the trademark is dubious” and “[t]he trademarks make have no reference to local modifiers and the registered domains do not offer protection sought by Complainant”.
- Respondent has rights or legitimate interests in respect of the Disputed Domain Names because Respondent “has been in the domain business for 6 or more years and owns thousands of local domains and is in the business of local search marketing”.
- The Disputed Domain Names have not been registered and are not being used in bad faith because, among other things, Respondent “has sold several thousand domains to the most sophisticated buyers with never one claim for bad faith”; Complainants and Respondent “are not competitors”; and “Complainant’s marks are non local and generic”.
Respondent requests that the Panel make a finding of reverse domain name hijacking.
6. Discussion and Findings
A. Procedural Matters
The Panel does not consider the Supplemental Filings because the parties have not shown why they were unable to provide that information in the Complaint or the Response and because none of the Supplemental Filings contains the certification required by paragraph 5(b)(viii) of the Rules.
This proceeding was brought by two Complainants: Kaitu, owner of the EROS Trademarks; and Darkside, operator of websites using the EROS Trademarks. Although “[t]here is no settled practice as to whether affiliates should, or must, join in a complaint”, the Panel accepts this designation here and proceeds accordingly. Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220.
B. Substantive Matters
Pursuant to the Policy, Complainants are required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
(i) Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainants, it is obvious that Complainants have rights in the EROS Trademarks.
As to whether the Disputed Domain Names are identical or confusingly similar to the EROS Trademarks, the relevant comparison to be made is with the second-level portion of each of the Disputed Domains Names only (e.g., “atlantaerosguide”), as it is well-established that the top-level domain names (i.e., “.com”) should be disregarded for this purpose.
Each of the Disputed Domain Names differs substantively from the EROS Trademarks only by the addition of a city name or abbreviation (for 18 of the 19 Disputed Domain Names) or the addition of the phrase “sexguide” to one of the Disputed Domain Names. The Panel agrees with Complainants that the addition of a mere geographical suffix or of a generic term to a trademark used in a domain name does not alter the fact that the domain name incorporating the trademark is confusingly similar to the mark. See, e.g., Six Continents Hotels, Inc. v. credoNIC.com / DOMAIN FOR SALE, WIPO Case No. D2004-0987 (“there is sufficient precedent for finding that the addition of a geographic term or name to a distinctive mark suggests that the domain name is the domain name of Complainant in that particular location”); and Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 quoting Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”).
Therefore, the Panel is convinced that Complainants have proven the first element of the Policy.
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1, “http://arbiter.wipo.int/domains/search/overview/index.html” (visited December 31, 2007).
Complainants have made out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Under the Policy, a respondent may demonstrate its rights or legitimate interests by any of the following circumstances:
(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).
In this case, Respondent does not argue that it has been commonly known by any of the Disputed Domain Names or that its use of any of the Disputed Domain Names is noncommercial. Therefore, neither paragraph 4(c)(i) nor 4(c)(ii) appears applicable.
Although Respondent does not explicitly argue that it has rights or legitimate interests in any of the Disputed Domain Names as a result of using them in connection with a bona fide offering of goods or services, Respondent’s arguments could be interpreted as such. However, given that the websites associated with the Disputed Domain Names – as evidenced by exhibits provided in the Complaint – contain links to websites that appear to be competitive with Complainants (such as “Discrete Housewife Escort”, “Escort City Guide” and “Localescorts”), Respondent’s actions are not bona fide for purposes of the Policy. See, e.g., SmithKline Beecham (Cork) Limited; SmithKline Beecham Corporation (dba GlaxoSmithKline) v. Daniel Crean, WIPO Case No. D2006-1185.
Therefore, the Panel is convinced that Complainants have proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in the Policy:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Policy, paragraph 4(b).
Here, the Panel is convinced that bad faith exists pursuant to, at least, paragraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy.
By offering to sell the Disputed Domain Names to Complainants “at a package price” slightly more than one month after most of the Disputed Domain Names were registered and shortly after Respondent sold another domain name to Complainants apparently for $199.95, the logical interpretation is that Respondent registered the Disputed Domain Names primarily for the purpose of selling them to Complainants for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Names. See, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (“Although no specific amount of money was asked for the domain names at issue in this email, the purpose of the email is apparently to offer the domain names for a consideration which exceeds the out-of-pocket registration costs.”)
Further, by registering at least 19 domain names that contain at least one of Complainants’ EROS Trademarks, Respondent has clearly prevented Complainants from reflecting the EROS Trademarks in corresponding domain names, especially where, as here, Complainants have made a practice of registering numerous domain names that contain the EROS Trademarks along with a geographic name. See, e.g., Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602 (“Multiple domain names incorporating a single trademark are now more readily identified as patterns of intentionally obstructive registration, where the facts suggest the presence of that obstructive intent.”).
Finally, as many decisions under the Policy have held, use of a domain name in connection with a website that contains links to websites that offer goods or services competitive with Complainants – as is the case here – creates a likelihood of confusion under paragraph 4(b)(iv) of the Policy. See, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082 (“The Respondent argues that there is no bad faith because the Respondent is not attempting to confuse Internet users and is using the disputed domain name in a descriptive sense only. However, there is no evidence that the Respondent is using the website to provide or offer his own… materials and therefore using the domain name to describe the goods and services provided by him on the website.”)
Therefore, the Panel is satisfied that Complainants have proven the third element required by the Policy.
In light of the above order, the Panel rejects Respondent’s request for a finding of reverse domain name hijacking.
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 <atlantaerosguide.com>, <bostonerosguide.com>, <chicagoerosguide.com>, <dallaserosguide.com>, <denvererosguide.com>, <erossexguide.com>, <houstonerosguide.com>, <lasvegaserosguide.com>, <miamierosguide.com>, <nashvilleerosguide.com>, <newyorkerosguide.com>, <nycerosguide.com>, <philadelphiaerosguide.com>, <phoenixerosguide.com>, <portlanderosguide.com>, <sandiegoerosguide.com>, <seattleerosguide.com>, <stlouiserosguide.com> and <washingtondcerosguide.com> be transferred to Group Kaitu, LLC, owner of the EROS Trademarks and the entity to which Complainant has requested that the Disputed Domain Names be transferred.
Douglas M. Isenberg
Dated: December 31, 2007
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