Eastman Kodak Company v. Farrah Mikail
Claim Number: FA1907001852827
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Farrah Mikail (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kodakledlighting.com> (“Domain Name”), registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2019; the Forum received payment on July 19, 2019.
On July 19, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kodakledlighting.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2019 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@kodakledlighting.com. Also on July 23, 2019, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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" 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 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
Complainant operates in the photographic and imaging equipment supplies industry. Complainant has rights in the KODAK mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 438,237, registered February 20, 1905). Respondent’s <kodakledlighting.com> domain name is identical or confusingly similar to Complainant’s KODAK mark because it wholly incorporates Complainant’s KODAK mark, and merely adds the generic or descriptive term “ledlighting” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <kodakledlighting.com> domain name. Respondent is not authorized or licensed to use Complainant’s KODAK mark and there is no evidence to suggest that the Respondent listed in the WHOIS record is commonly known by the Domain Name. Respondent fails to use the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the Domain Name’s resolving webpage (“Respondent’s Website”) to sell competing LED lighting products.
Respondent registered and uses the <kodakledlighting.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the Domain Name where Respondent uses the Respondent’s Website to sell competing LED lighting products. Respondent also had actual knowledge of Complainant’s rights in the KODAK mark prior to registering the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but (apparently) did send three e-mails to the Forum. The first e-mail, sent on July 24, 2019 confirmed that the Respondent’s Website had been taken down. The second e-mail, sent on August 17, 2019 by a Mr Halston Mikail of Spotlite American Corporation again confirms that the Respondent’s Website had been taken down and requests clarification as to the role of the Forum in this dispute. The final e-mail, also sent by Mr Mikail on August 17, 2019 to Complainant’s representative but copied to the Forum, appears to request that Complainant correct the Complaint to name Spotlite America Corporation as respondent.
In the interests of clarification, the Panel notes the following: The Forum is solely concerned with the Domain Name, and specifically whether the Complainant has satisfied the requirements of the Policy, such that the Panel may order transfer. The Respondent is the proper respondent in the present proceedings as she is the registered holder of the Domain Name. The Panel makes no findings in respect of any broader dispute between the parties and Spotlite America Corporation.
Complainant holds trademark rights for the KODAK mark. The Domain Name is confusingly similar to Complainant’s KODAK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the KODAK mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 438,237, registered February 20, 1905). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <kodakledlighting.com> Domain Name is confusingly similar to the KODAK mark as it fully incorporates the KODAK mark and adds the generic or descriptive terms “led” and “lighting” and the “.com” gTLD. The addition of generic terms along with a gTLD to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the KODAK mark. There is no evidence before the Panel that Respondent has any relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Farrah Mikail” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website that sells LED lighting products that compete with Complainant’s products. Use of a disputed domain name to sell competing goods is not evidence of a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar doman name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, June 10, 2015, Respondent had actual knowledge of Complainant’s KODAK mark as the Domain Name wholly incorporates Complainant’s KODAK mark as well as descriptive terms for products offered by Complainant. Furthermore Respondent’s Website offers products in direct competition with Complainant. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith by using the confusingly similar Domain Name in an attempt to attract, for commercial gain, users to the Respondent’s Website where Respondent sells competing LED lighting products. The use of a disputed domain name to mislead by redirecting them to a competing website may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <kodakledlighting.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 17, 2019
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