Eastman Kodak Company v. Surveilco
Claim Number: FA0910001288327
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 <kodaksecrets.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 8, 2009.
On October 8, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kodaksecrets.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 2009 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@kodaksecrets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 <kodaksecrets.com> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <kodaksecrets.com> domain name.
3. Respondent registered and used the <kodaksecrets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eastman Kodak Company, markets and sells photographic and imaging equipment and supplies. Complainant has used the KODAK mark since July 1, 1909. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its KODAK mark (e.g., Reg. No. 195,218 issued February 17, 1925).
Respondent, Surveilco, registered the <kodaksecrets.com> domain name on June 3, 2009. The disputed domain name resolves to a website featuring adult-oriented content.
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.
Previous panels have found that the registration of a mark with a federal trademark authority is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant holds multiple trademark registrations with the USPTO for its KODAK mark (e.g., Reg. No. 195,218 issued February 17, 1925). Therefore, the Panel finds Complainant has established rights in its KODAK mark under Policy ¶ 4(a)(i).
Complainant contends Respondent’s <kodaksecrets.com> domain name is confusingly similar to Complainant’s KODAK mark. The disputed domain name contains Complainant’s entire mark and adds the generic term, “secrets,” and the generic top-level domain (“gTLD”). “.com.” The Panel finds the addition of a generic term fails to adequately distinguish the disputed domain name from Complainant’s mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The Panel further finds that the addition of a gTLD is irrelevant under a Policy 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that Respondent’s <kodaksecrets.com> domain name is confusingly similar to Complainant’s KODAK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <kodaksecrets.com> domain name. Past panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to the Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <kodaksecrets.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <kodaksecrets.com> domain name. Complainant asserts that Respondent is not authorized to use the <kodaksecrets.com> domain name. The WHOIS information identifies Respondent as “Surveilco.” Therefore, the Panel finds that Respondent is not commonly known by the <kodaksecrets.com> domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <kodaksecrets.com> domain name resolves to a website featuring adult-oriented content and Respondent likely profits from this content. The Panel finds Respondent’s use of a confusingly similar disputed domain name to offer adult-oriented content is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses of the domain name under Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <kodaksecrets.com> domain name to offer adult-oriented content at the resolving website. Respondent likely receives some commercial advantage from offering the adult-oriented content. Internet users interested in Complainant, and Complainant’s photographic and imaging equipment and supplies, may become confused as to Complainant’s affiliation and sponsorship of the disputed domain name and resolving website. This confusion may tarnish Complainant’s mark, and Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel further finds that Respondent’s use of the <kodaksecrets.com>
domain name constitutes bad faith registration and use under Policy ¶
4(a)(iii). See Wells Fargo & Co. v.
Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding
that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the
diversion of the domain name to a pornographic site is itself certainly
consistent with the finding that the Domain Name was registered and is being
used in bad faith.”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <kodaksecrets.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 17, 2009
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