Eastman Kodak Company v. geren / wenzhen gu
Claim Number: FA1901001827776
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is geren / wenzhen gu (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kodac-screw.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2019; the Forum received payment on January 30, 2019.
On January 31, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <kodac-screw.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 February 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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@kodac-screw.com. Also on February 4, 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 response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 provides photographic and imaging equipment and supplies under the KODAK trademark. Complainant claims rights in the KODAK trademark based upon the registration with the United States Trademark and Patent Office (“USPTO”) (e.g., Reg. No. 195,218, registered Feb. 17, 1925). Respondent’s <kodac-screw.com> domain name is confusingly similar as it incorporates a phonetic equivalent of Complainant’s KODAK trademark (kodac) and adds a hyphen, the descriptive term “screw”, and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <kodac-screw.com> domain name. Respondent is not licensed or authorized to use Complainant’s KODAK trademark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to display adult-oriented material. Respondent also failed to respond to Complainant’s cease and desist letter.
Respondent registered or uses the <kodac-screw.com> domain name in bad faith. Respondent uses the disputed domain name to attract users, for commercial gain, to a website containing adult-oriented content. Furthermore, Respondent had actual knowledge of Complainant’s KODAK trademark when it registered the <kodac-screw.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the following U.S. trademark registrations:
No. 195,218 KODAK (word), registered February 17, 1925 for goods in class 16
No. 387,692 KODAK (word), registered May 27, 1941 for goods in class 16
No. 396,694 KODAK (stylized), registered July 28, 1942 for goods in class 18
No. 396,975 KODAK (stylized), registered August 11, 1942 for goods in classes 1, 2, 3, 4 and 5
No. 399,092 KODAK (stylized), registered December 15, 1942 for goods in classes 1, 9 and 10
No. 406,762 KODAK (stylized), registered April 25, 1944 for goods in classes 16, 26 and 27
No. 692,796 KODAK (word), registered February 9, 1960 for goods in classes 1 and 9
No. 763,542 KODAK (word), registered January 21, 1964 for goods in classes 9, 16 and 28
No. 928,096 KODAK (fig), registered February 1, 1972 for goods in classes 1, 2, 3, 4 and 5
No. 2,709,564 KODAK (word), registered April 22, 2003 for goods in class 1
No. 3,031,743 KODAK (word), registered December 20, 2005 for goods in classes 6, 11 and 16
No. 4,041,704 KODAK (word), registered October 18, 2011 for goods in class 9
No. 4,547,735 KODAK (word), registered June 10, 2014 for services in class 41
No. 4,655,216 KODAK (word), registered December 16, 2014 for goods in class 9
No. 4,743,766 KODAK (word), registered May 26, 2015 for goods in class 7
No. 4,818,980 KODAK (word), registered September 22, 2015 for services in class 44
No. 4,893,176 KODAK (word), registered January 26, 2016 for goods in class 9
No. 5,254,240 KODAK (word), registered August 1, 2017 for goods in class 9
Respondent registered the disputed domain name <kodac-screw.com> on November 10, 2018.
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 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 (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.”).
Complainant claims rights to the KODAK trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the KODAK trademark (e.g., Reg. No. 195,218, registered Feb. 17, 1925). Therefore, the Panel may find that Complainant has rights in the KODAK mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <kodac-screw.com> domain name is confusingly similar to Complainant’s KODAK trademark as Respondent misspells the trademark and adds a hyphen, a generic term and a gTLD to the trademark. Such changes do not typically negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Lucasfilm Entertainment Company Ltd. LLC and Lucasfilm Ltd. LLC v George Ring / DN Capital Inc., FA 1673825 (Forum June 7, 2016) (finding that “Respondent’s <lukasfilm.com> domain name incorporates the LUCASFILM mark and merely substitutes a phonetically identical ‘k’ for the ‘c,’” and is therefore confusingly similar); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). In the present case, Respondent merely replaces one letter “k” with the letter “c” in the KODAK trademark and adds a hyphen, the generic term “screw”, and a “.com” gTLD. The Panel notes that although Complainant’s trademark KODAK is indeed well-known, it is sometimes misspelled online in social media with a letter “c” at the end instead of the letter “k”, although such web sites then also clearly note the correct spelling in the text. The Panel therefore agrees with Complainant and find that the <kodac-screw.com> does not contain changes that would sufficiently distinguish it from the KODAK mark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <kodac-screw.com> domain name. Specifically Complainant argues that Respondent is not licensed or authorized to use the KODAK trademark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
The WHOIS information of record identifies Respondent as “geren / wenzhen gu,” and there is no other evidence to suggest that Respondent was authorized to use the KODAK trademark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <kodac-screw.com> domain name to display adult-oriented material. Using a disputed domain name to display adult-oriented material is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Virtu Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). The Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered or uses the <kodac-screw.com> in bad faith as Respondent uses the disputed domain name to display adult-oriented content, and provides screenshots of the disputed domain name’s resolving webpage which contains adult-oriented material. Use of a disputed domain name to divert Internet users to pornographic or adult-oriented content may evince bad faith pursuant to Policy ¶ 4(b)(iv). See Abbvie. Inc. et all v. ZhangHua Zhong/Hua Zhong ZhangWuxi, FA 1817277 (Forum Dec. 26, 2018) (holding that direction of the disputed domain name to a website that features gambling and pornographic material constitutes registration and use of the disputed domain in bad faith per Policy ¶ 4(b)(iv)). The Panel finds that Respondent registered and uses the <kodac-screw.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent registered the <kodac-screw.com> domain name with actual knowledge of Complainant’s rights in the KODAK trademark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s trademark prior to registering <kodac-screw.com> is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the world famous mark in its domain name. Therefore, the Panel finds that Respondent registered the <kodac-screw.com> domain name with actual knowledge of Complainant’s KODAK mark, thus demonstrating bad faith per 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 <kodac-screw.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 1, 2019
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