Eastman Chemical Company v. Kumar Patel
Claim Number: FA0509000561094
PARTIES
Complainant is Eastman Chemical
Company (“Complainant”) represented by Carrie
L. Kiedrowski, of Jones Day, 1420 Peachtree Street, N.E., Suite 800, Atlanta, GA 30309-3053. Respondent is Kumar Patel (“Respondent”), 5 Stanborough House, Wisbech,
Cambridgeshire, PE14 9QB, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <eastmanchemicalco.com>,
registered with Enom, Inc.
PANEL
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.
Barry Schreiber as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 14, 2005; the National Arbitration Forum received a
hard copy of the Complaint on September 16, 2005.
On September 15, 2005, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <eastmanchemicalco.com>
domain name is registered with Enom, Inc. and that the Respondent is the
current registrant of the name. Enom,
Inc. has verified that Respondent is bound by the Enom, 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 September 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 10, 2005 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@eastmanchemicalco.com by e-mail.
A timely Response was received and determined to be complete on October
10, 2005.
On October 17, 2005, Complainant submitted an additional submission as
its Answer to Respondent’s Response.
On October 20, 2005, Respondent submitted an additional response, in
reply to Complainant’s additional submission.
On October 20, 2005, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Barry Schreiber as Panelist.
The Respondent further submitted additional submissions which were
received by the Panelist on October 24, 2005 and taken in to consideration
since it was received in a timely manner according to The Forum's
Supplemental Rule #7.
The original Complaint, Response and all
additional submissions were taken into account by the Panelist in deliberating
the various elements of the case and the opposing issues presented by the
respective parties.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has set forth in its lengthy recitation of its position, a
clear chronological analysis of the history of the various trademarks/service
marks issued to Eastman Chemical Company.
Complainant further sets out concise and clear factual and legal grounds
in support of its position on all three grounds necessary to prevail under applicable
ICANN rules and policies in very lengthy pleadings. A summary of Complainant’s relevant contentions follows.
Under ICANN Policy ¶ 4(a)(i), Complainant asserts that it has
established rights in the EASTMAN mark through registration with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 850,818 issued June 18,
1968). Complainant also provides
through extrinsic evidence that it has numerous trademark registrations for the
EASTMAN CHEMICAL mark. In addition, Complainant also implies that
it has common law rights in the EASTMAN CHEMICAL mark. “Since 1968 when Eastman Chemical became a
division of Eastman Kodak, it has been known and referred to as “Eastman
Chemical.”
Under Policy ¶ 4(a)(ii), Complainant clearly charges, inter alia,
that “Respondent has no legitimate interests in the <eastmanchemicalco.com>
domain. Respondent is not a
licensee of, or otherwise currently affiliated with, Eastman Chemical. Eastman Chemical has never authorized or
otherwise condoned or consented to Respondent’s registration of the domain name
<eastmanchemicalco.com>.”
Finally, under Policy ¶ 4(a)(ii) Complainant clearly establishes that
Respondent registered and used the <eastmanchemicalco.com> domain
name in bad faith. For example,
Complainant states that “Respondent has no right to use the Eastman Chemical
marks, and it is inconceivable that Respondent was not aware of the Eastman
Chemical marks when he registered the <eastmanchemicalco.com> considering
his role as Respondent in Eastman Chemical Company v. Patel, FA 524752.
An extremely compelling argument, if not decisive, is Complainant’s
citation on page 5 of its Complaint, paragraph 19, “ As an initial matter,
Respondent registered EASTMANCHEMICALCO.COM on the same day that the National
Arbitration Forum issued a decision against this same Respondent in favor of
Eastman Chemical, ordering the transfer of EASTMAN-CHEMICAL.COM. (Eastman Chemical Company v. Kumar Patel, FA
524752 (Nat. Arb. Forum Sept.12, 2005), finding eastman-chemical.com to be
confusingly similar to Complainant’s trademark.”
B. Respondent
Respondent’s Response submitted on October 10, 2005, consisted of well
meaning, emotional assertions, directed against Complainant, Complainant’s law
firm, the National Arbitration Forum and the system of resolving such disputes
in general. Unfortunately, this
Response in no way addressed directly or indirectly the allegations set forth
in the Complaint.
C. Additional Submissions
The additional submission by Complainant, although enlightening, did not add further grounds, only substantiated Complainant’s original allegations for the Panelist to consider. The submission by Respondent emailed to the National Arbitration Forum as an email on October 20, 2005, was but again a recitation of the Respondent’s frustration with the process. The Respondent further submitted additional submission which were received by the Panelist on October 24, 2005 and taken in to consideration since as it was received in a timely manner according to The Forum's Supplemental Rule #7. Due to the voluminous and extensive additional submissions by both parties, the Panelist did not feel it relevant to set forth the materials covered by these submissions.
FINDINGS
The Panelist finds that Complainant has clearly and unequivocally proved each of the required three elements of Paragraph 4(a) of the Policy, subsections (1), (2) and (3), to wit: (1) Respondent’s domain name, <eastmanchemicalco.com>, is identical or confusingly similar to the Complainant’s trademark; (2) Respondent has no legitimate interests with respect to the domain name; and (3) Respondent registered the domain name in bad faith and hence the relief sought by Complainant should be granted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 asserts that it has
established rights in the EASTMAN mark through registration with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 850,818 issued June 18,
1968). See Vivendi Universal Games
v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
The Panel
finds that Complainant has established common law rights in the EASTMAN
CHEMICAL mark, as Complainant has been operating under the name “Eastman
Chemical” since 1968 and has been known and referred to by that name. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see also S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
the complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
Moreover, Complainant alleges that
Respondent’s <eastmanchemicalco.com>
domain name is confusingly similar
to Complainant’s EASTMAN and EASTMAN CHEMICAL marks pursuant to Policy ¶ 4(a)
(i), as the domain name incorporates both of Respondent’s marks with the
addition of the letters “co” which is a common abbreviation for the word
“company” to Complainant’s mark. The
Panel has found that such changes are not enough to overcome the confusingly
similar aspects of Respondent’s domain name.
See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930
(Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names,
which incorporated the complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement” did not add any distinctive features capable
of overcoming a claim of confusing similarity); see also Am. Int’l Group, Inc.
v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003)
(finding that the addition of the term “assurance,” to the complainant’s AIG
mark failed to sufficiently differentiate the name from the mark under Policy ¶
4(a)(i) because the appended term related directly to the complainant’s
business).
Furthermore, the Panel has
determined that the addition of the top-level domain “.com” is irrelevant in
determining whether the <eastmanchemicalco.com>
domain name is confusingly similar to Complainant’s marks. See Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); see also Daedong-USA, Inc.
v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29,
2003) (“Respondent's domain name, <kioti.com>, is identical to
Complainant's KIOTI mark because adding a top-level domain name is irrelevant
for purposes of Policy ¶ 4(a)(i).”).
The Panel has discerned that Respondent is not commonly known by the <eastmanchemicalco.com> domain name. Thus, the Panel concluded that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c) (ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that respondent has no rights or legitimate interests in domain names because it is not commonly known by complainant’s marks and respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply).
In addition, Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent offered to sell the disputed domain name registration. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel holds that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is using the disputed domain name to link to a website that is critical of Complainant. See Cryptologic, Inc. v. Internet Billions Domains, Inc., FA. 318925 (Nat. Arb. Forum Nov. 5, 2004) (finding that the respondent does not have rights or legitimate interests in the <cryptologic.net>, <ecryptologic.com>, <e-cryptologic.com>, <ecryptologic.net> and <e-cryptologic.net> domain names where the respondent used the domains for the purpose of posting critical and highly inflammatory statements about the complainant); see also Petrovich v. Jazz Melody, FA 290894 (Nat. Arb. Forum Sept. 10, 2004) (supporting the proposition that regardless of the respondent’s first amendment rights, the respondent’s use of the complainant’s trademark in a domain name is not protected).
Complainant contends that
Respondent has registered and used the <eastmanchemicalco.com>
domain name in bad faith pursuant
to Policy ¶ 4(b) (i) because Respondent offered to sell the disputed
domain name registration to Complainant.
See Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding bad faith where the respondent offered domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to the complainant amounts to a use of the domain name in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO
Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain
names except to offer them to sale to the complainant); see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the respondent offered the domain names for sale).
Complainant alleges that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) as Respondent is using the <eastmanchemicalco.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b) (iv) through respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv) because respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Furthermore, the Panel has
unwavering determined that Respondent has used the <eastmanchemicalco.com> domain name, which contains
Complainant’s EASTMAN mark, to redirect Internet users to a website dedicated
to criticizing Complainant. The Panel
may find such use to be indicative of bad faith registration and use pursuant
to Policy ¶ 4(a) (iii). See TM Acquisition Corp. v. S.E.A. Domains, FA 156800 (Nat. Arb. Forum June 12, 2003) (finding the
respondent's use of the complainant's mark to redirect Internet users to a
website dedicated to criticizing the complainant was evidence that the
respondent’s domain names were registered and used in bad faith); see also Diners
Club Int’l, Ltd. v. Infotechnics Ltd.,
FA 169085 (Nat. Arb. Forum
Aug. 20, 2003) (“Respondent may have the right to post criticism of
Complainant on the Internet, however, Respondent does not have the right to
completely appropriate Complainant’s registered trademark in a domain name in a
way that will mislead Internet users as to the source or affiliation of the
attached website.”); see also Diners
Club Int’l, Ltd. v. Infotechnics Ltd.,
FA 169085 (Nat. Arb. Forum
Aug. 20, 2003) (“Respondent’s registration and use of a domain name
nearly identical to Complainant’s mark to criticize Complainant’s business
practices is evidence of registration and use of the <diners-club.net>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Complainant’s registration of the
EASTMAN mark with the USPTO bestows upon Respondent constructive notice of
Complainant’s rights in the mark.
Furthermore, the Panel has inferred that Respondent registered the
domain name with actual knowledge of Complainant’s rights due to the fact that
Respondent is using the domain name to openly criticize Complainant. Thus, the Panel has determined that
Respondent’s registration of a domain name containing Complainant’s mark in
spite of Respondent’s actual or constructive knowledge of Complainant’s rights
in the mark is evidence of bad faith registration and use pursuant to Policy ¶
4(a) (iii). See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also Am. Online, Inc.
v. Miles, FA 105890 (Nat. Arb. Forum May
31, 2002) (“Respondent is using the domain name at issue to resolve to a
website at which Complainant’s trademarks and logos are prominently
displayed. Respondent has done this
with full knowledge of Complainant’s business and trademarks. The Panel finds
that this conduct is that which is prohibited by Paragraph 4(b) (iv) of the
Policy.”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eastmanchemicalco.com>
domain name be TRANSFERRED from Respondent to Complainant.
Barry Schreiber Panelist
Dated: November 2, 2005
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