DECISION

 

Eastman Kodak Company v. Jung Hochul

Claim Number: FA0106000097660

 

PARTIES

Complainant is Eastman Kodak Company, Rochester, NY, USA (“Complainant”) represented by James D. Kole, of Nixon Peabody LLP.  Respondent is Jung Hochul, Kyongsan Kyongbuk, Korea (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kodakexpress.com> registered with Stargate Communications, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 12, 2001; the Forum received a hard copy of the Complaint on June 21, 2001.

 

On June 13, 2001, Stargate Communications, Inc. confirmed by e-mail to the Forum that the domain name <kodakexpress.com> is registered with Stargate Communications, Inc. and that Respondent is the current registrant of the name.  Stargate Communications, Inc. has verified that Respondent is bound by the Stargate Communications, 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 June 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 17, 2001 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@kodakexpress.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On July 23, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <kodakexpress.com> domain name is identical to Complainant's KODAK EXPRESS registered mark and confusingly similar to its KODAK registered mark.

 

Respondent has no rights or legitimate interest with respect to the disputed domain name.

 

Respondent registered and used the <kodakexpress.com> domain name in bad faith.

 

B. Respondent

No Response was received.

 

FINDINGS

1.      Complainant is in the business of providing photographic and imaging equipment, supplies, and related services.

2.      Complainant has used its KODAK mark continuously since 1909.

3.      Complainant obtained numerous registrations of the KODAK and related marks with the United States Patent and Trademark Office as early as 1925.

4.      Complainant has registered the KODAK EXPRESS mark in several other countries and registered it with the International Register in 1990.

5.      Respondent registered the <kodakexpress.com> domain name on May 3, 2001.

6.      Until at least May 21, 2001, Respondent used the <kodakexpress.com> domain name to indicate the name was for sale.

7.      At the date of filing, Respondent used the <kodakexpress.com> domain name to link directly to Complainant's home page at <kodak.com>.

8.      Respondent is not an agent, nor has authorization from Complainant to use its marks.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

Complainant has established rights in its KODAK and KODAK EXPRESS marks by virtue of its federal and international registrations.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

 

The <kodakexpress.com> domain name is identical to Complainant's KODAK EXPRESS mark.  See Amherst  v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration). 

 

The disputed domain name is also confusingly similar to Complainant's federally registered KODAK mark in that the <kodakexpress.com> domain name contains all of the Complainant's mark with the generic word "express" added.  There is ample authority for the proposition that generic words do not defeat a claim of confusing similarity.  See, e.g., Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent has not come forward to demonstrate it has rights or legitimate interests in the <kodakexpress.com> domain name.  There is a presumption that a Respondent has no rights or legitimate interests with respect to a disputed domain name when that Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

 

Complainant asserts, and Respondent fails to refute, that Respondent initially used the <kodakexpress.com> domain name to offer it for sale.  Such use does not constitute an offering of bona fide goods as provided under Policy ¶ 4(c)(i).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

 

Complainant claims, and there is no evidence in the record to dispute that Respondent is not known by the <kodakexpress.com>  domain name pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

As already noted, Respondent used the <kodakexpress.com> domain name initially to offer it for sale.  Registering such a distinctive and famous mark for the sole purpose of offering it for sale is not a legitimate noncommercial or fair use under Policy 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

According to the record, Respondent registered the disputed domain name and within three weeks placed it for sale.  When contacted by Complainant's representatives, less than one month after registering the <kodakexpress.com> domain name, Respondent offered to transfer it for $3210.00, an amount well in excess of Respondent's out-of-pocket expenses.  It is well settled that registering a domain name for the primary purpose of selling it, in excess of documented costs incurred is bad faith as set forth in Policy ¶ 4(b)(i).  See, e.g., Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrates bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that Complainant's requested relief should be granted.

 

Accordingly, it is Ordered that the <kodakexpress.com> domain name be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: July 27, 2001