Eastman Kodak Company v. Ma Huateng
Claim Number: FA2205001997713
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Ma Huateng (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <koddak.com>, registered with Cosmotown, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On June 2, 2022, Cosmotown, Inc. confirmed by e-mail to the Forum that the <koddak.com> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 June 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2022 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@koddak.com. Also on June 3, 2022, 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 July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the KODAK trademark and service mark established by its ownership of the portfolio of trademark registrations described below and its extensive use of the mark in its business providing photographic and imaging equipment and supplies, printing equipment, and related goods and services, since at least 1888.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s registered trademark, KODAK, and to Complainant’s website address at <www.kodak.com> because it consists of a phonetically equivalent misspelling of the famous KODAK mark in which the letter “D” appears twice, and argues that the addition of the extra “D” in KODDAK and the generic Top Level domain extension “.com” are not sufficient to distinguish Respondent’s domain from Complainant’s famous mark KODAK. See MTD Prods. V. Dilmurot Adilboev, Forum Claim No. FA1806001793676 (2018) (“An addition of a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i).”)
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that there is no evidence that Respondent has been commonly known by the disputed domain name <koddak.com>, and adds that because of the fame of the KODAK mark, it would be very difficult for anyone but Complainant to assert that it is commonly known as KODAK.
Complainant further argues that Respondent is in no way connected with Complainant and has no authority, license, permission, or other arrangement from Complainant to use the mark KODAK to identify Respondent’s domain name, website, or any services provided by Respondent.
Complainant refers to a screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, which illustrates that the website displays adult-oriented and/or pornographic images; and the content on the website appears entirely in the Mandarin language.
Complainant submits that such use of the disputed domain name, that is confusingly similar to Complainant’s mark, to direct Internet uses to adult-oriented material or pornographic content is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain pursuant to Policy 4(c)(iii). See, e.g., Eastman Kodak Company v. geren / wenzhen gu, Forum Claim No. FA1901001827776 (2019) (“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).”).
Complainant alleges that the disputed domain name was registered and is being used in bad faith, arguing that the KODAK mark is arbitrary, distinctive, and world famous, and therefore it is extremely unlikely that an individual would legitimately choose KODAK as part of a domain name unless he was seeking to create an impression of an association with Complainant. Given the worldwide fame of the KODAK mark and Kodak’s reputation for providing high-quality products and services, “there is a legal presumption of bad faith, when Respondent should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., Forum Claim No. FA124506 (2002). See Philip Morris USA Inc. v. Deborah Gowrie, Forum Claim No. FA1606001677734 (2016) (under the usTLD Policy, finding that due to the fame, notoriety, and longevity of Complainant's MARLBORO marks, the “Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and [the panel] find[s] that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii)”).
Complainant argues that it is inconceivable that Respondent could have been unaware of the KODAK mark at the time it registered the disputed domain name. Rather, Respondent’s misappropriation of the KODAK mark by registering the disputed domain name appears to be intentional, willful, and in bad faith. Accordingly, Complainant submits that this Panel should find that Respondent had actual knowledge of Complainant’s rights in its famous KODAK mark and that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).See, e.g., Michelin N. Am., Inc. v. Energie Media Group, Forum Claim No. FA1207001451882 (2012) (holding that where “Respondent had actual knowledge of Complainant’s rights in the MICHELIN mark before it registered the domain names in light of their famous character,” Respondent “registered and used the disputed domain names in bad faith under Policy ¶ 4(a)(iii)”.
Complainant argues that Respondent’s registration of the disputed domain name which contains the whole of Complainant’s famous KODAK trademark with an extra letter “D, and use of the disputed domain name to direct to a website containing adult-oriented and/or pornographic images and content tarnishes Complainant’s reputation, which “exemplifies bad faith per Policy ¶ 4(a)(iii). Chicago Southland Convention & Visitors Bureau v. Daniel, Forum Claim No. FA1606001679347 (2016) (“Respondent uses the disputed domain name to tarnish the reputation of Complainant and, as such, exemplifies bad faith per Policy ¶ 4(a)(iii).”; “Registering and subsequently using the disputed domain in a manner that misleads Internet users into believing the Complainant is somehow related to a pornographic web site is what offends the Policy.”).
Numerous panelists for The Forum have repeatedly held that registering and using a confusingly similar domain name to divert Internet users to pornographic or adult-oriented content is evidence of bad faith under Policy ¶ 4(b)(iv). See, e.g., Eastman Kodak Company v. geren / wenzhen gu, Forum Claim No. FA1901001827776 (2019) (holding that use of KODAC-SCREW.COM to display adult-oriented content constituted bad faith registration and use of the disputed domain name in violation of Policy ¶ 4(b)(iv)).
Finally, Complainant contends that because of the fame of the KODAK mark, there is no plausible circumstance in which the Respondent could legitimately use the disputed domain name without causing confusion with the mark KODAK and harm to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and supplier of photographic and imaging equipment and supplies, printing equipment, and related goods and services on which it uses KODAK trademark and service mark, for which it owns a portfolio of trademark registrations including the following in the United States of America where, according to the registration details for the disputed domain name, Respondent purports to be based:
· United States registered trademark, KODAK, registration number 195218, registered on the Principal Register on February 17, 1925, for goods, in international class 16;
· United States registered trademark, KODAK, registration number 692796, registered on February 9, 1960, on the Principal Register for goods in international class 16;
· United States registered trademark, KODAK, registration number 763542, registered on the Principal Register on January 21, 1964, for goods in international classes 9, 16, 28;
· United States registered trademark, KODAK, registration number 2709564, registered on the Principal Register on April 22, 2003 for goods in international class 1;
· United States registered trademark, KODAK, registration number 3031743, registered on the Principal Register on December 20, 2005 for goods in international class 2;
· United States registered trademark, KODAK, registration number 4041704, registered on the Principal Register on October 18, 2011 for goods in international class 9;
· United States registered service mark KODAK, registration number 4,547,735, registered on the Principal Register on June 10, 2014 for services in international class 41;
· United States registered trademark KODAK, registration number 4655216, registered on the Principal Register on December 16, 2014 for goods in international class 9;
· United States registered trademark KODAK, registration number 4743766, registered on the Principal Register on May 26, 2015 for goods in international class 7;
· United States registered service mark KODAK, registration number 4818980, registered on the Principal Register on September 22, 2015 for services in international class 44;
· United States registered service mark KODAK, registration number 44893176, registered on the Principal Register on January 26, 2016 for goods in international class 9;
· United States registered service mark KODAK, registration number 5254240, registered on the Principal Register on August 1, 2017 for goods in international class 9; and
· United States registered service mark KODAK, registration number 5905686, registered on the Principal Register on November 12, 2019 for goods in international class 25.
The disputed domain name <koddak.com> was registered on March 7, 2022, and resolves to a website that inter alia contains pornographic images.
There is no information available about Complainant, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the details of registration of the disputed domain name.
The Registrar has confirmed that Respondent, who availed of a privacy service to conceal his identity on the published WhoIs, is named as the registrant of the disputed domain name.
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 provided uncontested evidence to prove that, on the balance of probabilities it has rights in the KODAK mark, established by its ownership of its portfolio of trademark and service mark registrations described above and extensive use of the mark in its business photographic and imaging equipment and supplies, printing equipment, and related goods and services, since at least 1888.
The disputed domain name <koddak.com> consists of Complainant’s KODAK mark in its entirety, with an additional letter “d”, together with the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant’s KODAK mark is clearly distinguishable within the disputed domain name and placed as it is, between the two syllables, the additional letter “d” is likely not to be noticed or to be perceived as a misspelling of the KODAK mark.
The positioning of the additional letter “d”, forming a double “d”, between the two syllables in the disputed domain name creates a word “koddak”, that is phonetically identical to Complainant’s KODAK mark.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s KODAK mark.
This Panel finds therefore that the disputed domain name <koddak.com> is confusingly similar, and almost identical to the KODAK mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· there is no evidence that Respondent has been commonly known by the disputed domain name <koddak.com>;
· because of the fame of the KODAK mark, it would be very difficult for anyone but Complainant to assert that it is commonly known as KODAK;
· Respondent is in no way connected with Complainant;
· Complainant has granted no authority, license, permission, or made any other arrangement to permit Respondent to use the KODAK mark to identify Respondent’s domain name, website, or services provided by Respondent;
· the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint shows that the website, the linguistic element of which is in the Mandarin language, displays adult-oriented and/or pornographic images, and such use of the disputed domain name, that is confusingly similar to Complainant’s mark, to direct Internet uses to adult-oriented material or pornographic content is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain pursuant to Policy 4(c)(iii). See, e.g., Eastman Kodak Company v. geren / wenzhen gu, Forum Claim No. FA1901001827776 (2019) (“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).”).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
It is implausible that the disputed domain name was registered without knowledge of Complainant, its rights, and its famous KODAK mark.
When the disputed domain name was chosen and registered on March 7, 2022 Complainant’s first trademark registration was already almost 100 years old, and Complainant had built an extensive international business using the mark on its photographic and imaging equipment and supplies, printing equipment, and related goods and services, since at least 1888.
The disputed domain name is almost identical to Complainant’s KODAK mark, merely adding the additional letter “d” in a position that does change the pronunciation of the work and is visually likely to be missed or mistaken by Internet users perceiving the disputed domain name to be identical to Complainant’s KODAK mark.
This Panel finds on the balance of probabilities that the disputed domain name was intentionally chosen and registered as a misspelling of Complainant’s mark in an exercise in typosquatting with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the KODAK mark.
The uncontested evidence shows that Respondent is using the disputed domain name as the address of a website displaying adult content and pornographic images.
In the Complainant’s submission, the linguistic content of the website is in the Mandarin language, but Complainant has not provided any evidence of this or any translation of the wording on the site.
In other circumstances, this Panel would have expected to be provided with a translation of the wording, however, given the graphic content of the website, it is possible to find that the website clearly has no association with Complainant or its international business and so this Panel accepts Complainant’s submission that the disputed domain name, which is almost identical to Complainant’s KODAK mark, is being used by Respondent, without license or permission to publish pornographic material which is tarnishing Complainant’s mark and reputation.
The evidence allows this Panel to find on the balance of probabilities that the disputed domain name is being used by Respondent, in bad faith and for commercial gain, in an exercise of typosquatting, to attract, misdirect and lure Internet traffic seeking Complainant’s website, to Respondent’s website.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Respondent availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in 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 <koddak.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 6, 2022
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