Eastman Kodak Company v. thisistheallxclub
Claim Number: FA1107001396691
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is thisistheallxclub (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kodakladies.com>, registered with GoDaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2011; the National Arbitration Forum received payment on July 1, 2011.
On July 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kodakladies.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kodakladies.com. Also on July 5, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <kodakladies.com> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <kodakladies.com> domain name.
3. Respondent registered and used the <kodakladies.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eastman Kodak Company, owns the KODAK mark which it uses in connection with photographic and imaging equipment and supplies as well as related services. Complainant has multiple registrations for its KODAK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 195,218 registered February 17, 1927).
Respondent, thisistheallxclub, registered the disputed domain name on May 8, 2011. The <kodakladies.com> domain name resolves to Respondent’s commercial adult-oriented website.
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.
Complainant claims that it has established rights in the KODAK mark. The registration of a trademark with a federal trademark authority such as the USPTO sufficiently establishes a complainant’s rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Additionally, as is evidenced by cases such as Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), the country in which a respondent lives and operates and the country in which a trademark is registered need not be the same. Complainant has provided the Panel with evidence of registration of the KODAK mark with the USPTO (e.g., Reg. No. 195,218 registered February 17, 1927). Though Respondent’s place of operation is listed as Canada, the Panel finds that Complainant’s rights have been established in the KODAK mark for the purposes of Policy ¶ 4(a)(i).
Respondent registered the <kodakladies.com> domain name. The domain name incorporates Complainant’s mark in its entirety. The mark is followed by the generic term “ladies” and the generic top-level domain (“gTLD”) “.com.” These changes are inconsequential to a Policy ¶ 4(a)(i) analysis. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <kodakladies.com> domain name is confusingly similar to Complainant’s KODAK mark under Policy ¶ 4(a)(i).
The Panel holds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent has no rights and legitimate interests in the disputed domain name. Once the Panel finds that Complainant has made a prima facie case in support of this, the burden shifts to Respondent to provide evidence that contradicts these allegations. See 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.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). As the Respondent has not submitted a response to the Complaint, the Panel will assume that Respondent has no rights or legitimate interests in the <kodakladies.com> domain name. Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”). The Panel finds that Complainant has made a prima facie case, and will review the record for information suggesting that Respondent does have rights or legitimate interests in the <kodakladies.com> domain name.
A respondent that is commonly known by a domain name may be found to have rights or legitimate interests in the domain name. The WHOIS listing for the domain name and the complainant’s claims as to a respondent’s affiliation with the complainant are used to determine whether a respondent is commonly known by a disputed domain name. This is supported by cases such as Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); and 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). Judging from the WHOIS listing for the <kodakladies.com> domain name, Respondent is not commonly known by the domain name. Complainant has alleged in the Complainant that Respondent has no connection to Complainant and has not obtained permission to use Complainant’s mark. Thus, the Panel is compelled to find that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent uses the <kodakladies.com> domain name to display adult-oriented material. The Panel finds that this is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corp. v. Taylor, FA 1389985 (Nat. Arb. Forum June 20, 2011) (finding that the resolution of a disputed domain name to a website featuring adult-oriented material is neither a bona fide offering of goods or services nor a legitimate noncommercial of fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii)); see also Microsoft Corp. v. microsoftporn.com Private Registrant c/o DreamHost Web Hosting, FA 1390487 (Nat. Arb. Forum June 20, 2011) (finding that Respondent’s use of the disputed domain name, which displays adult-oriented material, does not qualify as a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant contends that Respondent is benefitting commercially from the registration and use of the <kodakladies.com> domain name. The use of a website, including those which display adult-oriented material, which profit a respondent by the diversion of Internet users demonstrates bad faith. See Microsoft Corp. v. Taylor, FA 1389985 (Nat. Arb. Forum June 20, 2011) (finding that presumably commercially gaining from an adult-oriented website demonstrates that a respondent registered and used a disputed domain name in bad faith); see also 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). Respondent uses a confusingly similar domain name to divert Internet users to an adult-oriented website which generates profit for Respondent. Internet users reach this website because they become confused as to the association of the disputed domain name to Complainant and Complainant’s mark. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name was done as a product of the potential for commercial gain pursuant to Policy ¶ 4(b)(iv).
The registration and use of a domain name to feature adult-oriented material alone suggests that the respondent acted in bad faith. See Microsoft Corp. v. Taylor, FA 1389985 (Nat. Arb. Forum June 20, 2011) (finding that the registration and use of a domain name that displays adult-oriented material was done in bad faith under Policy ¶ 4(a)(iii)); see also Romantic Tours, Inc. v. JC L, FA 1386041 (Nat. Arb. Forum June 6, 2011) (“The Panel finds that using the confusingly similar domain name to direct Internet users to an adult-oriented [website] constitutes bad faith registration and use under Policy ¶ 4(a)(iii).”). Respondent’s <kodakladies.com> domain name resolves to a website displaying adult-oriented material. Therefore, the Panel finds further evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kodakladies.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 8, 2011
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