DECISION

 

Eastman Kodak Company v. Palyvap vap / kodak

Claim Number: FA2402002082762

PARTIES

Complainant is Eastman Kodak Company ("Complainant"), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Palyvap vap / kodak ("Respondent"), Oklahoma, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kodakcareers.com>, registered with HOSTINGER operations, UAB.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2024; Forum received payment on February 6, 2024.

 

On February 8, 2024, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <kodakcareers.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2024 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@kodakcareers.com. Also on February 12, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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

Complainant contends as follows:

 

Complainant Eastman Kodak Company has continuously used its world famous mark, KODAK, including for photographic and imaging equipment and supplies, printing equipment, and related goods and services, since at least 1888.

 

Kodak has registered the KODAK mark in the United States Patent and Trademark Office as a trademark and as a service mark and has obtained numerous United States registrations for the mark KODAK and for marks containing KODAK

 

The at-issue domain name is confusingly similar to Complainant's KODAK mark as it consists of such mark with them term "careers" added along with the ".com" top-level.

 

Respondent lacks rights and legitimate interests in the at-issue domain name. Respondent is using the Disputed Domain, the KODAK name, mark, logo, and, and the names of Kodak executives and human resources employees in connection with a malicious, illegal, scheme involving fraudulent employment offers allegedly from Kodak in which the Respondent impersonates a real Kodak employee, and sends e-mails from e-mail addresses containing the at-issue domain name that include Kodak's genuine address, and the Kodak logo and trade dress colors, with details about purported employment opportunities for remote IT positions, screening questionnaires, subsequent job offers extended to recipients/victims, and on-boarding and training details. Respondent is not authorized to use Complainant's trademark and is not known by <kodakcareers.com>. Respondent has provided false contact information in registering the domain name.

 

Respondent has registered and used the at-issue domain name in bad faith. Respondent passes itself off as Complainant in a fraudulent phishing scheme. Respondent is seeking to dupe unsuspecting Internet job seekers into providing Respondent with their private financial information and other valuable personal information (such as personal identification credentials). Respondent's phony email also directed the recipient to sign a document so that it might deliver funds to the targeted recipient for the purchase of equipment to furnish a "mini office" and backed up the request with the image of a bogus check made up to look as if it were drawn on a Kodak account and payable to the recipient. The domain name addresses a parked webpage. Because of Complainant's fame there is a presumption of bad faith as Respondent should have been aware of Complainant's trademark and there is no plausible circumstance in which Respondent could legitimately use the at-issue domain name in a benign manner.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the KODAK mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in its KODAK trademark.

 

Respondent used the at-issue domain name to steal Complainant's identity and facilitate an illegal email phishing scheme.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Any of Complainant's USPTO registrations for its KODAK trademark is sufficient to demonstrate Complainant's rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <kodakcareers.com> domain name contains Complainant's KODAK trademark followed by the suggestive term "careers" with all followed by the ".com" top-level domain name. The differences between the at-issue domain name and Complainant's KODAK trademark are insufficient to distinguish the at-issue domain name from KODAK for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <kodakcareers.com> domain name is confusingly similar to Complainant's KODAK trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."). 

 

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.

 

The WHOIS information for <kodakcareers.com> identifies its registrant as "Palyvap vap" and record before the Panel contains no evidence that otherwise tends to show that Respondent is known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by <kodakcareers.com>. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).

 

Respondent uses the at-issue domain name to promote a phishing scheme. Respondent, using email sent from the at-issue domain name, poses as a hiring authority for Complainant. The imposter's email, further dressed to appear as if it originated from Complainant, urges the recipient to provide answers to questions and personal documentation in furtherance of hiring the recipient for a remote position. Respondent's use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where the respondent was using the disputed domain name to phish for internet users personal information by offering a fake job posting on the resolving website).

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to the Policy.

 

Respondent engages in criminal conduct. By misappropriating Complainant's trademark to use in its domain name and email address as discussed above, Respondent passes itself off as Complainant (and/or an agent thereof) in furtherance of fraud. Respondent deliberately set out to confound internet users as to the sponsorship of fraudulent email so that it might deceptively interrogate such internet users and additionally have such users present documents to Respondent disclosing ordinarily confidential personal information. Respondent's use of the at-issue domain name to deceive internet users disrupts Complainant's business and shows Respondent's bad faith registration and use of the at-issue domain name pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the <abbuie.com> domain name to impersonate Complainant's CEO. Such use is undeniably disruptive to Complainant's business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)"); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). The fact that Respondent is engaging in email phishing itself shows Respondent's bad faith registration and use of the at-issue domain name. See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).

 

Moreover, Respondent registered the at-issue domain name knowing that Complainant had trademark rights in the famous KODAK trademark. Respondent's prior knowledge is evident given the notoriety of Complainant's mark and given Respondent's scheme to pass itself off as Complainant in furtherance of fraudulently extracting information from third-party email recipients. Respondent's prior knowledge is further evidence that Respondent registered and used the <kodakcareers.com> domain name in bad faith pursuant to the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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 <kodakcareers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: March 5, 2024