WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Group Kaitu, LLC and Darkside Productions, Inc. v. Domains by Proxy, Inc. / Kristin Davis

Case No. D2011-1391

1. The Parties

Complainants are Group Kaitu, LLC and Darkside Productions, Inc., both of Richmond, Virginia, United States of America, represented by Gavin Law Offices, PLC, United States of America.

Respondent is Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America / Kristin Davis of New York, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <eroslistings.com> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2011. On August 17, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on August 23, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on August 26, 2011. 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” or “UDRP”), 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 August 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2011. Respondent sent an email communication to the Center on September 13, 2011 and filed the Response on September 16, 2011.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 5, 2011. 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.

Due to exceptional circumstances, the Panel has found it necessary to extend the timeframe for the rendering of the decision to the date indicated under the Panel's concluding order, at the end of the decision.

4. Factual Background

Complainants own of a family of EROS marks in the field of adult-themed entertainment services, including EROS, EROS.COM, EROS GUIDE, EROS-GUIDE.COM, THE EROS GUIDE, EROS ESCORTS, and THE ULTIMATE GUIDE TO EROS ESCORTS.

Complainants registered the <eros.com> domain name in 2001, and each of the <eros-guide.com> and <erosguide.com> domain names in April 1997. Complainant has continuously operated websites using these domain names from their respective dates of registration.

The Domain Name was registered on June 1, 2011.

5. Parties’ Contentions

A. Complainant

1. The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainants have rights.

Complainants state that they have used certain of their registered trademarks for over thirteen years, and that, on information and belief, the marks are nationally and internationally known in the field of providing Internet guides and/or directories to adult entertainers and related adult-themed goods and services. They have invested millions of dollars publicizing and using their marks to ensure identification with excellence in providing Internet guides to adult entertainers and related goods and services. Complainants allege that Respondent operates a website linked to the Domain Name, which provides services in the field of adult-themed entertainment including dating. Accordingly, Complainants and Respondent are in the same field of adult-themed entertainment and compete for customers and advertisers in that field.

To demonstrate that the Domain Name and one or more of Complainants’ trademarks are confusingly similar, Complainants argue that the Domain Name must misappropriate sufficient textual components from Complainant’s marks such that an ordinary Internet user who is familiar with the goods or services distributed under the marks would, upon seeing the Domain Name, likely think that, owing the visual and/or phonetic similarity between the marks and the Domain Name, an affiliation exists between the site identified by that Domain Name and the Complainants. The Domain Name incorporates Complainants’ EROS mark in its entirety and is nearly identical in such a way as to suggest Complainants’ co-creation, sponsorship, and/or affiliation between Respondent's products and services and those offered by Complainants. The addition of the generic term “listings” to Complainants’ EROS mark does not alter the fact that the Domain Name is confusingly similar. In fact, in multiple prior UDRP decisions, the panel has found that the addition of a generic or descriptive word to the EROS and/or EROS GUIDE marks does not alter the fact that the disputed domain names are confusingly similar. In the instant case, Respondent’s Domain Name cannot avoid confusion by combining Complainants’ EROS mark with the term “listings,” a term describing the advertising services provided on Complainants’ websites. This combination aggravates the confusing similarity of Complainants’ marks to Respondent’s Domain Name.

2. Respondent has no rights or legitimate interests in respect of the Domain Name.

Complainants state that Respondent has not licensed, nor has Respondent obtained permission, to use Complainants’ trademarks. Respondent's Domain Name was registered in June 2011, well after the date Complainants acquired rights in their marks and well after Complainants registered and operated the <eros.com>, <erosguide.com>, <eros-guide.com> and other “Eros” formative websites advertising similar services as are advertised at the website located at the Domain Name. No evidence exists to suggest that Respondent has been commonly known by the Domain Name. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Instead, Complainants contend that Respondent seeks commercial gain from these activities and knew of Complainants’ marks prior to registering and using the Domain Name.

According to Complainants, Respondent uses the Domain Name to divert consumers to Respondent’s own website, which directly competes with Complainants’ online services by offering and selling search/advertisement services similar, if not identical, to those of Complainants. The purpose for using Complainants’ trademarks is to misleadingly draw Internet users to Respondent’s website for the purpose of obtaining revenue. Respondent's use of Complainants’ marks in the Domain Name is deliberate and designed to exploit the goodwill of Complainants’ marks. Respondent’s deliberate use of Complainant’s marks is apparent from its intentional copying of Complainant’s website Terms of Use. Respondent copied Complainants’ <eros-guide.com> Terms of Use nearly verbatim, failing to remove certain references to Complainants and Complainants’ “www.eros-guide.com” website. Moreover, Respondent has repeatedly used in its advertising variations of the federally registered Complainants’ ULTIMATE GUIDE trademarks. Accordingly, Respondent’s actual knowledge of Complainants and Complainants’ marks is demonstrated; therefore, Respondent’s use of the Domain Name does not constitute a bone fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

3. The Domain Name was registered and is being used in bad faith.

Complainants state that they have made extensive use of their EROS and EROS formative marks for, in most cases, over a decade before Respondent registered the Domain Name and used it in to compete against the Complainants. Complainants have spent substantial time and money creating brand association with Complainants’ trademarks in the field of adult-themed entertainment, social networking and dating and the online sale of adult-themed products.

Complainants state that under paragraph 4(b)(iv) of the Policy, bad faith registration and use exists where a respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website by creating a likelihood of confusion with a complainant's marks. Complainant contends that Respondent intentionally attempts to divert consumers from Complainants’ website to the website located at the Domain Name by using a domain name confusingly similar to Complainants’ numerous federally protected trademarks. Further, Respondent's use of the Domain Name, which fully incorporates Complainants’ EROS mark, is an egregious use of Complainants’ brand to attract interested online customers to Respondent's website. No plausible explanation exists as to why Respondent selected the <eroslistings.com> Domain Name, in light of Complainants’ trademarks, except to trade on the goodwill of Complainants, particularly in light of the additional aggravating factors discussed herein. Respondent registered the Domain Name primarily for the purpose of capitalizing on the value inherent in Complainants’ marks. On information and belief, Respondent earns revenue from its website located at the Domain Name through payments made by adult entertainers who Respondent advertises on its website.

Complainants assert that Respondent was aware of the Complainants’ trademarks at the time it registered the Domain Name. Respondent had actual knowledge of Complainants’ trademarks and websites and operated in bad faith by misappropriating and using Complainants’ marks in the Domain Name to attract, for commercial gain, Internet users. Respondent copied Complainants’ Terms of Use nearly verbatim leaving in references to Complainants and their “www.eros-guide.com” website and using variations of other of Complainant’s ULTIMATE GUIDE marks. In the alternative, Respondent operated in bad faith by failing to research the Domain Name prior to registration. Respondent should have conducted a good faith search of the United States Patent and Trademark Office (USPTO) database, as well as a good faith search using an Internet search engine such as Google, Bing or Yahoo!. Complainants have numerous trademark registrations for the EROS mark and other EROS formative marks. Even a cursory search of the USPTO records would reveal Complainants’ extensive rights in its marks. In addition, a search on Google for “eros” results in Complainants’ website being identified as the first search result.

Finally, Respondent operated in bad faith by using a privacy service to cloak its identity. Although a registrant may have legitimate reasons to use a privacy service, it may also do so in an attempt to disrupt proceedings under the Policy. Taken in the overall context of this dispute, Respondent’s use of a privacy service is an indication of bad faith.

B. Respondent

1. Respondent states that Complainants incorrectly claim that the Domain Name is identical or confusingly similar to a series of trademark marks in which Complainants have rights.

Respondent argues that “eros” is a commonly used word for erotic love or desire. To be able to blanket trademark the word is akin to trade-marking the word “sex,” which is not possible and would be an infringement on First Amendment rights under the United States Constitution.

Respondent contends that the Domain Name is not confusingly similar to Complainants’ trademarks, since the Domain Name, <eroslistings.com>, is inherently different from Complainants’ EROS trademark and its <eros.com> domain name. Complainants’ website at “www.eros.com” charges a fee for personalized profiles for sex workers. However, Respondent’s website linked to the Domain Name is a free classified site that offers no personalized profiles, while listings expire in one day. To imply that the Domain Name and Complainants’ marks are confusing is to say <craiglist.com> and <angieslist.com> are confusing because they both use a commonly used word, “list”. While Complainant claims that Respondent earns revenue from advertising, Respondent denies this assertion. Respondent’s site is a completely free site; it is a listing website not an advertising site. There is a difference. Respondent does not charge or allow personal profiles for advertising. One must post a classified ad which expires each day. Respondent asserts that it has its own different logo and pushes the word “listing” because that is what the website does. Complainant’s trademarks are for services different from those offered on Respondent’s site.

2. The Respondent has rights and legitimate interests in respect of the Domain Name.

Respondent has been known in the adult entertainment industry as the “Famous Manhattan Madam”, Kristin Davis, for three years, and made national news. She has referenced the word “eros” in many interviews with the media in relation to her former business, which she operated from 2001-2008. Respondent states that under section 4(c)(i-iii) of the Policy, she is offering the bona fide services of a website that allows short-term (one week or less) classified listings, which is something Complainants do not offer. Respondent is not generating any commercial gain. Instead, her website was started to provide short term classified listings for personals and adult entertainment free of charge, to support an industry that Respondent believes in. Respondent does not use the Domain Name to divert customers to her website. Respondent’s site is a free site, which does not charge a fee for posting a classified ad, so there is no direct competition with Complainants. By contrast, Complainants charge a minimum of USD 150 per month for an individualized personal adult-themed listing in four different categories. The shortest advertising period Complainants permit is for two weeks. Respondent operates a free site that offers non-individualized classified listings with no customization. The listings expire daily and there are no weekly or monthly offerings. Respondent argues that Complainants want to hold a monopoly on the adult entertainment market and cannot allow a free website with completely different business offerings. Respondent has been creating her free classified site for one year.

3. The Domain Name was not registered and is not being used in bad faith.

Respondent further emphasizes there is no commercial gain on her website; it is and always will be free and thus her business model is completely different from the Complainants’ approach. Respondent thus urges that Complainants’ claim that Respondent operates in bad faith to steal business is false. Emails were sent by Respondent to parties posting classified ads specifically stating that Respondent had no connection with Complainants. Respondent was aware of Complainants’ Eros website. However, “eros” is much like the word “sex”: you cannot trademark a widely used word without including specificity. Complainants should have trademarked a term for a classified listing site if they felt that was their business; however, they did not. They have no such trademark for Respondent’s type of business model.

6. Discussion and Findings

As has been recited in many UDRP decisions, in order to succeed in their Complaint, Complainants must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied, as follows:

i. the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

ii. Respondent has no rights to or legitimate interests in respect of the Domain Name; and

iii. Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel determines that Complainants are the owner of the trademarks, EROS, EROS.COM, EROS GUIDE, EROS-GUIDE.COM, THE EROS GUIDE, EROS ESCORTS, and THE ULTIMATE GUIDE TO EROS ESCORTS. Several of these marks, including EROS and EROS GUIDE, have been used by Complainants since 1997.

The Panel also finds that the Domain Name <eroslistings.com> is confusingly similar to Complainant’s marks, especially its EROS and EROS GUIDE marks. Confusing similarity exists because the Domain Name, aside from the addition of the gTLD “.com”, incorporates the EROS mark in its entirety and simply adds a generic and descriptive term, “listings.” Moreover, the descriptive word listings might be viewed as describing some of the content on Complainants’ sites, and thus does not serve to distinguish Respondent from Complainants. See, e.g. Group Kaitu, LLC v.SergeiVasiliev, WIPO Case No. D2006-1229 (November 14, 2006) (“As numerous prior Panels have held, where a domain name incorporates a complainant’s mark, this is sufficient to establish the domain name is identical or confusingly similar for the purposes of the Policy”; finding <erosporn.com> confusingly similar to complainants’ EROS and EROS GUIDE marks); Group Kaitu, LLC andDarkside Productions v. M E Board/David Archuleta, WIPO Case No. D2006-0637 (July 25, 2006) (finding <eros-wireless.com> confusingly similar to complainants’ EROS and EROS GUIDE marks); Group); Darkside Productions, Inc. andGroup Kaitu v. Practical Growth, Inc., WIPO Case No. D2007-1755 (December 31, 2007) (finding that the addition of a city name or abbreviation to the EROS mark does not alter the fact that respondent’s domain names are confusingly similar to complainants’ marks and ordering the transfer of 19 domain names, such as <atlantaerosguide.com>Group Kaitu, LLC); Darkside Productions, Inc.v. Sunlane Media LLC, WIPO Case No. D2008-1831 (January 19, 2009) (ordering transfer of <eroscams.com>, <erosdating.com>, <erosentertainment.com>, and <erosstories.com>); and Group Kaitu, LLC, Darkside Productions, Inc v. DiGirolamo, WIPO Case No. D2007-1423 (November 26, 2007) (<eros-nj.com> confusingly similar to EROS).

Because the Domain Name is identical or confusingly similar to the trademark of Complainants, the Panel considers that Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

A complainant is normally required to make out a prima facie case that 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 respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views On Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.

In this case, Complainants have demonstrated that they own the EROS family of trademarks and that they have not authorized use by Respondent of these marks in the Domain Name or otherwise. Respondent is not commonly known as “Eros Listings”, nor is Respondent affiliated with, sanctioned or sponsored by Complainants. Complainants contend that Respondent is using the Domain Name to compete improperly with Complainants. As noted above, Respondent only began to use the Domain Name in June 2011, long after rights were established by Complainants in their marks. The Panel finds that Respondent’s unauthorized of the Domain Name intentionally trades on the fame of Complainant’s mark, which is not a bona fide use. See Disney Enterprises, Inc. v. Janice McSherry d/b/a Florida Vacation Homes, NAF Claim No. 154589 (June 17, 2003) (unauthorized use of name “Disney Vacation Villas” on website does not establish legitimate interests in <disneyvacationvillas.com>).

The Panel finds that Complainants have made a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

Accordingly, once Complainants have established its prima facie case, the burden is on Respondent to prove she has a right or legitimate interest in the Domain Name. Here, Respondent has argued that she is known in the adult entertainment industry as the “Famous Manhattan Madam”, and that she has referenced the word “eros” in interviews with the media. These contentions do not support any rights or legitimate interests in the Domain Name. Respondent also emphasizes that hers is a free website with completely different business offerings, so there is no competition with Complainants. The Panel disagrees with Respondent’s assessment. Both Complainants and Respondent operate in the adult services industry. Even accepting Respondent’s contention that she offers free services while Complainants do not, such does not eliminate the concern that her website, operating under a Domain Name that is confusingly similar to Complainants’ trademarks, is drawing potential customers away from the Complainants.

The Panel thus finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

With Respondent’s lack of any right or legitimate interest in the Domain Name, the Panel is left to determine whether the Domain Name was registered and is being used in bad faith. The Panel finds that this is the case. Respondent’s use of the Domain Name to promote adult services and related content, and the facts that Respondent copied some of Complainants’ terms of service and acknowledges that she was aware of the Complainants, demonstrates that Respondent targeted Complainants and their EROS trademarks when Respondent registered the Domain Name. Respondent then used the Domain Name to take advantage of Complainant’s goodwill and to divert users to Respondent’s website, which offered services in the same adult services industry.

For all of the above reasons, the Panel finds that the Domain Name was registered and is being used in bad faith pursuant to Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <eroslistings.com>, be transferred to Complainant Group Kaitu, LLC, as requested by Complainants.

Christopher S. Gibson
Sole Panelist
Dated: October 24, 2011