Eastman Kodak Company v. Kacper Kaminski Kacper Kaminski / AVARE Kacper Kaminski
Claim Number: FA1202001427731
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Kacper Kaminski Kacper Kaminski / AVARE Kacper Kaminski (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kodakgallerycoupon.org>, registered with Az.pl, Inc (R1699-LROR).
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 2, 2012.
On February 3, 2012, Az.pl, Inc (R1699-LROR) confirmed by e-mail to the National Arbitration Forum that the <kodakgallerycoupon.org> domain name is registered with Az.pl, Inc (R1699-LROR) and that Respondent is the current registrant of the name. Az.pl, Inc (R1699-LROR) has verified that Respondent is bound by the Az.pl, Inc (R1699-LROR) 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 February 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2012 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@kodakgallerycoupon.org. Also on February 7, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <kodakgallerycoupon.org> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <kodakgallerycoupon.org> domain name.
3. Respondent registered and used the <kodakgallerycoupon.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eastman Kodak Company, owns multiple federal trademark registrations issued by the United States Patent and Trademark Office (“USPTO”) for its KODAK mark (e.g., Reg. No. 195,218 registered February 17, 1925). Complainant uses the mark as its brand name in the imaging, camera, and photography industries.
Respondent, Kacper Kaminski Kacper Kaminski / AVARE Kacper Kaminski, registered the disputed domain name on November 4, 2011. The disputed domain name resolves to a website offering advertisements and links to companies unrelated to Complainant.
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 its rights in the KODAK mark by registering it with the USPTO (e.g., Reg. No. 195,218 registered February 17, 1925). Complainant submitted sufficient evidence to verify its factual claims, therefore, the Panel finds that Complainant has established its rights in the KODAK mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO. See 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); see also 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).
Complainant also claims that Respondent’s <kodakgallerycoupon.org> domain name is confusingly similar to its KODAK mark. The disputed domain name includes Complainant’s entire mark, while adding the generic top-level domain “.org,” the generic term “coupon,” and the descriptive term “gallery.” The Panel finds that none of the changes made to Complainant’s mark by Respondent to form the disputed domain name sufficiently differentiate the mark from the domain name. Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s KODAK mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant has shifted the burden of proof to Respondent by making, what the Panel finds is, a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). Respondent failed to file a Response in this matter. Because of that fact, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will make no such assumptions but will examine the entire record and address Respondent’s rights or legitimate interests in the disputed domain name within the guidelines provided by Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Respondent has not offered any evidence to rebut Complainant’s assertion. The WHOIS information identifies the registrant of the disputed domain name as “Kacper Kaminski Kacper Kaminski / AVARE Kacper Kaminski.” Based upon this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name under 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website soliciting Internet users to sign up for a coupon offer and a membership in the “Kodak Gallery.” The website also offers links to unrelated third party websites. The Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See 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.”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant argues that Respondent is gaining commercially from the confusion created when Internet users arrive at its website. The disputed domain name resolves to a website offering information about a “Kodak Gallery” membership alongside links to unrelated third parties. It appears as though the information is being provided to further confuse Internet users into believing that Respondent’s website is affiliated with Complainant in some way. Respondent presumably generates revenue from the website by collecting a small fee for each Internet user that is diverted through one of the links. The Panel determines that Respondent’s has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because it is trying to gain commercially off of the confusion created by the disputed domain name and its website. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant also contends that, in light of the fame and notoriety of Complainant's KODAK mark, it is inconceivable that Respondent could have registered the <kodakgallerycoupon.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
The Panel finds that Complainant has 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 <kodakgallerycoupon.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 9, 2012
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