Eastman Kodak Company v. beveragetrend magazine
Claim Number: FA0809001226474
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen
M. Walsh, of Nixon Peabody LLP,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <kodakelectronics.com>, registered with Estdomains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2008.
On September 29, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <kodakelectronics.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@kodakelectronics.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kodakelectronics.com> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <kodakelectronics.com> domain name.
3. Respondent registered and used the <kodakelectronics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has registered the KODAK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 692,796 issued February 9, 1960) for photographic materials, apparatus and equipment.
The <kodakelectronics.com> domain name was registered on August 7, 2008 and resolves to a website that utilizes the KODAK mark and logo and purports to offer cell phones and related accessories. In addition, Internet users are subjected to a series of pop-up advertisements.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the KODAK mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). It is not
necessary that Complainant have registered its trademark with an authority in
the jurisdiction where Respondent is situated in order to establish rights
under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant
whether the complainant has registered its trademark in the country of the
respondent’s residence); see also
Renaissance Hotel Holdings, Inc. v. Renaissance
The <kodakelectronics.com>
domain name contains the generic top level domain (“gTLD”) “.com” and
Complainant’s KODAK mark in its entirety.
Following Complainant’s mark is the descriptive term “electronics” that
describes part of the business in which Complainant engages. The inclusion of a gTLD is irrelevant to a
Policy ¶ 4(a)(i) analysis and the use of a word that
has an obvious relationship to Complainant’s business does not distinguish the
disputed domain name. As a result, the
Panel finds that the <kodakelectronics.com>
domain name is confusingly similar to Complainant’s KODAK mark pursuant to
Policy ¶ 4(a)(i).
See Whitney Nat’l Bank v. Easynet
Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic
words with an obvious relationship to Complainant’s business and a gTLD renders
the disputed domain name confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).”); see also Allianz of
Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that
the addition of the generic term “finance,” which described the complainant’s
financial services business, as well as a gTLD, did not sufficiently
distinguish the respondent’s disputed domain name from the complainant’s mark
under Policy ¶ 4(a)(i)).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Before the Panel may proceed under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks
rights and legitimate interests in the disputed domain name. Having found this to be the case here, the
burden is now upon Respondent to prove that it has rights or legitimate
interests in the disputed domain name. See Towmaster, Inc. v. Hale,
FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a
prima facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have
rights or legitimate interests.”); see
also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii)
of the Policy shows that the burden of proof shifts from the Complainant to the
Respondent once the Complainant has made out a prima facie case that the
Respondent has no rights or interests in the domain names.”).
Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the <kodakelectronics.com> domain name, but will nonetheless
examine the record in consideration of the elements listed under Policy ¶
4(c). See Vanguard Group, Inc. v. Collazo, FA
349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the absence
of a Response, the Panel accepts as true all reasonable allegations . . .
unless clearly contradicted by the evidence.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc.,
HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate
in a domain name dispute . . . but the failure to participate leaves a
respondent vulnerable to the inferences that flow naturally from the assertions
of the complainant and the tribunal will accept as established assertions by
the complainant that are not unreasonable.”).
Complainant states that Respondent is no way connected to
Complainant and has no authority, license or permission to use the KODAK mark
in any way. Additionally, the WHOIS
information only identifies Respondent under the alias “beveragetrend
magazine.” Without any additional
information in the record, the Panel concludes that Respondent is not commonly
known by the <kodakelectronics.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the
<shoredurometer.com> and <shoredurometers.com> domain names because
the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic
Equip't as the registrant of the disputed domain names and there was no other
evidence in the record to suggest that the respondent was commonly known by the
domain names in dispute); see also Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not authorize
or license the respondent’s use of its mark in a domain name).
The <kodakelectronics.com>
domain name resolves to a website offering commercial products and goods under
the KODAK mark. Internet users who
engage the disputed domain name are also forced to view a series of pop-up
advertisements. Various previous panels
have held pop-up advertisements and the unauthorized offering of products and
services under a complainant’s mark cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night
Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (holding that the respondent’s
use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to
divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or
services); see also State Farm Mut. Auto. Ins.
Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“The unauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide offering of goods or
services.”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The disputed domain names resolves to a website that offers
services and products in competition with those offered under Complainant’s
mark. The Panel finds this to be
disruptive to Complainant’s business and therefore conclusive evidence that
Respondent registered and is using the <kodakelectronics.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA
198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered
a domain name primarily to disrupt its competitor when it sold similar goods as
those offered by the complainant and “even included Complainant's personal name
on the website, leaving Internet users with the assumption that it was
Complainant's business they were doing business with”); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
And finally, the Panel presumes that the series of
pop-advertisements and purported offering of cell phones and other products on
the website that resolves from the disputed domain name must commercial benefit
Respondent in some way. Without any
contradictory information in the record, the Panel considers this to be an
attempt by Respondent to commercially benefit from the confusing similarity in
the disputed domain name with Complainant’s KODAK mark. As a consequence, the Panel concludes that
this is further evidence of Respondent’s bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Allianz of Am. Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar products
as those sold under the complainant’s famous mark).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kodakelectronics.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: November 6, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum