Eastman Kodak Company v. credoNIC.com
Claim Number: FA0610000818317
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh, of Nixon Peabody LLP, Clinton Square, P.O. Box 31051, Rochester, NY 14603-1051. Respondent is credoNIC.com (“Respondent”), PO Box 1991, Hallandale, FL 33008.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <masdkodak.com>, registered with Registerfly.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2006.
On October 24, 2006, Registerfly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <masdkodak.com> domain name is registered with Registerfly.com, Inc. and that Respondent is the current registrant of the name. Registerfly.com, Inc. has verified that Respondent is bound by the Registerfly.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 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 14, 2006 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@masdkodak.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 17, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 <masdkodak.com> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <masdkodak.com> domain name.
3. Respondent registered and used the <masdkodak.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eastman Kodak Company, holds numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the KODAK mark (e.g. Reg. No. 195,218 issued February 17, 1925; Reg. No. 387,692 issued May 27, 1941). Complainant utilizes the KODAK mark in connection with photographic and imaging equipment and supplies and related services. Complainant has registered the <kodak.com> domain name, which utilizes the KODAK mark, in order to offer its goods and services to Internet customers.
Respondent registered the <masdkodak.com> domain name on April 15, 2006. Respondent was previously using the disputed domain name to operate a website with adult-oriented content. Respondent’s website also displayed a statement offering the disputed domain name for sale, saying “limited time offer for $250.” Currently, Respondent’s domain name resolves to an inactive 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’s registrations of the KODAK mark with the USPTO
significantly predate Respondent’s registration of the disputed domain
name. The Panel finds that Complainant’s
USPTO registrations establish Complainant’s rights in the KODAK mark pursuant
to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); 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.”).
Respondent’s <masdkodak.com>
domain name is confusingly similar to Complainant’s KODAK mark. The disputed domain name includes
Complainant’s KODAK mark in its entirety without alteration. Respondent has added the letters “masd” to
Complainant’s mark, which in no way distinguish the disputed domain name from
Complainant’s mark. The Panel finds
that the disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.”); see also
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name confusingly
similar to the complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and
legitimate interests in the <masdkodak.com> domain name. Complainant’s assertion constitutes a prima
facie case for purposes of the Policy.
Complainant’s establishment of a prima facie case shifts the
burden to Respondent to demonstrate that it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
Respondent had the opportunity to provide the Panel with evidence and
arguments in support of its rights or legitimate interests by submitting a
Response. The Panel views Respondent’s
failure to avail itself of the opportunity to respond as evidence suggesting
that Respondent lacks rights or legitimate interests in the disputed domain
name. Nonetheless, the Panel will
evaluate the available evidence to determine whether Respondent has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see
also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent was at first using the disputed domain name to
operate a website featuring adult-oriented content. Such use is not a bona fide offering of goods or services
because Respondent is using Complainant’s mark to attract Internet users to its
website featuring content wholly unrelated to Complainant. Further, the adult-oriented content at
Respondent’s website has the potential to tarnish public goodwill in
Complainant’s mark. Such use is not a
legitimate noncommercial of fair use because Respondent presumably profited
from its website. Thus, the Panel finds
that Respondent’s use of the disputed domain name in connection with an
adult-oriented website does not indicate rights or legitimate interests as
contemplated by Policy ¶¶ 4(c)(i) or (iii).
See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb.
Forum Sept. 27, 2002) (finding that the respondent’s use of its domain
name to link unsuspecting Internet traffic to an adult orientated website,
containing images of scantily clad women in provocative poses, did not
constitute a connection with a bona fide offering of goods or services
or a noncommercial or fair use); see also 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.”).
Currently, the disputed domain name does not resolve to any
content, and there is no available evidence that Respondent is engaged in
demonstrable preparations to use the disputed domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent’s failure to
demonstrate preparations to use the disputed domain name, which is currently
inactive, is further evidence that Respondent lacks rights or legitimate
interests as contemplated by Policy ¶¶ 4(c)(i) or (iii). See L.F.P., Inc. v. B and J Props.,
FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do
nothing and effectively ‘sit on his rights’ for an extended period of time when
that Respondent might be capable of doing otherwise.”); see also State Fair of Tex. v. State Fair Guides,
FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that the respondent’s failure
to develop the site demonstrates a lack of legitimate interest in the domain
name).
Furthermore, there is no available evidence that Respondent
is commonly known by the disputed domain name.
Complainant asserts that Respondent is not sponsored by or affiliated
with Complainant and has no authorization to reflect Complainant’s KODAK mark
in a domain name. Additionally,
Respondent’s WHOIS information identifies Respondent as “credoNIC.com,” a name
with no apparent relationship to the <masdkodak.com> domain
name. The Panel finds that Respondent
is not commonly known by the disputed domain name, and thus, lacks rights or
legitimate interests as contemplated by Policy ¶ 4(c)(ii). See 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); see
also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was using the disputed domain name to redirect
Internet users to Respondent’s website featuring adult-oriented content. Because of the confusing similarity between
the <masdkodak.com> domain name and Complainant’s KODAK mark,
Internet users may mistakenly believe that Complainant sponsors or is
affiliated in some way with Respondent’s website. Respondent was trafficking on this confusion, presumably
profiting from its adult-oriented website.
Such use also disrupts Complainant’s business because it has the
potential to tarnish the goodwill in Complainant’s mark by associating the
KODAK mark with an adult-oriented website.
Thus, the Panel finds that Respondent’s original use of the <masdkodak.com>
domain name was evidence of bad faith registration and use pursuant to
Policy ¶¶ 4(b)(iii) and (iv). 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 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 is not limited to the circumstances outlined in
Policy ¶¶ 4(b)(i)-(iv) in finding evidence of bad faith. As the panel in Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000), stated, “just because Respondent’s conduct does not fall
within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that
the domain names at issue were not registered in and are not being used in bad
faith.” The Panel finds that
Respondent’s current nonuse of the disputed domain name is also evidence of bad
faith. Because the <masdkodak.com>
domain name includes Complainant’s mark in its entirety, it is difficult to
contemplate a good faith use of the disputed domain name, and without any
evidence of demonstrable preparations for a good faith use on the part of
Respondent, it is impossible to imply such use. Thus, the Panel finds that Respondent’s failure to demonstrate
preparations for a good faith use of the disputed domain name is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding
that, despite the respondent’s decision to passively hold the disputed domain
name, “Respondent has made its intention clear and the continuing threat
hanging over the Complainant’s head constitutes bad faith use.”); see also Phat Fashions v. Kruger, FA 96193 (Nat.
Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even
though the respondent has not used the domain name because “[i]t makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will create the confusion described in the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <masdkodak.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 1, 2006
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