Eastman Kodak Company v. Ko Suk Ju
Claim Number: FA0204000112489
Complainant
is Eastman Kodak Company, Rochester,
NY, USA (“Complainant”) represented by Kristen
M. Walsh, of Nixon Peabody LLP. Respondent is Ko Suk Ju, KyongsangNam Do, SOUTH KOREA (“Respondent”).
The
domain name at issue is <kodak.biz>,
registered with YesNIC Co. Ltd.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum
appointed James P. Buchele as the single Panelist. 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.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on April 27, 2002.
On
May 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
The
<kodak.biz> domain name is identical to Complainant's KODAK mark.
Respondent
has no rights or legitimate interests in the <kodak.biz> domain
name.
Respondent
registered the <kodak.biz> domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response.
Complainant has used its KODAK mark in
relation to its photographic and imaging products since 1909. Complainant first registered its KODAK mark
with the United States Patent and Trademark Office on February 17, 1925. Complainant currently owns numerous
trademark registrations for its KODAK mark including Registration Numbers:
195,218; 387,692; 389,813; 390,029 and 396,694.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is
not a licensee of Complainant.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1)
the domain name is identical to a trademark or service mark in which
the Complainant has rights;
and
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established that it has rights to its KODAK mark through continuous use and
registration. Respondent’s <kodak.biz>
domain name is identical to Complainant’s KODAK mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See 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”).
There is no evidence, and Respondent has
not come forward to establish that it has any trademarks or service marks for
KODAK or <kodak.biz>.
Therefore Respondent has not established that it has rights or
legitimate interests in the disputed domain name pursuant to STOP Policy ¶
4(c)(i). See Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that, because Respondent did not come forward with a
Response, the Panel could infer that it had no trademark or service marks identical
to <grammy.biz> and therefore had no rights or legitimate interests in
the domain name).
Based on the fame of Complainant’s mark
it can be inferred that Respondent intends to use <kodak.biz> in
order to attract Complainant’s customers to Respondent’s website. This type of use is not considered to be a
bona fide offering of goods or services pursuant to STOP Policy ¶
4(c)(ii). See William L. Lyon &
Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002) (finding the Respondent’s “intent to
trade [on] the goodwill of Complainant’s mark, by attracting Internet users
confused as to the likely affiliation between Complainant and Respondent’s
website” indicated the Respondent had no rights or legitimate interests
pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group
o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb.
25, 2002) (“The use of another's trademark to attract users to Respondent's
domain is not considered to be a bona fide offering of goods or services
pursuant to STOP Policy ¶ 4(c)(ii)”).
Respondent is known to the Panel as Ko
Suk Ju, and there is no evidence that Respondent is commonly known as KODAK or
<kodak.biz>. Furthermore,
based on the fame of Complainant’s mark it would be very difficult for anyone
but Complainant to assert that it is commonly known as KODAK or <kodak.biz>. See Nat’l Acad. Of Recording Arts &
Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb. 11, 2002) (finding that
the famous nature of Complainant’s GRAMMY mark prevented Respondent from being
commonly known by <grammy.biz>); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000)
(finding no rights or legitimate interests where one “would be hard pressed to
find a person who may show a right or legitimate interest” in a domain name
containing Complainant's distinct and famous NIKE trademark.).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based on the fame of Complainant’s mark
and the STOP IP Claim procedure, Respondent was on notice as to Complainant’s
rights in the <kodak.biz> domain name when Respondent chose to
register it. Therefore, Respondent’s
registration of the disputed domain name despite this fact is evidence of bad
faith registration. See Valspar Sourcing, Inc. v. TIGRE, FA 112596 (Nat. Arb. Forum June 4, 2002) (“Respondent was
on notice of Complainant’s rights in PAINT.BIZ when it registered the disputed
domain name, because Respondent received notice of Complainant’s IP Claim. Respondent’s registration of the disputed
domain name despite this notice when Respondent had no right or legitimate
interest in the domain name is evidence of bad faith”); see also Gene
Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that
the unique nature of the STOP Policy and the notice given to Respondent
regarding existing IP Claims identical to its chosen domain name precluded good
faith registration of <genelogic.biz> when Respondent registered it with
“full knowledge that his intended business use of this domain name was in
direct conflict with a registered trademark of a known competitor in exactly
the same field of business”).
Furthermore, based on the fame of
Complainant’s mark, any intended use by Respondent of <kodak.biz>
will create a likelihood of confusion as to the source, sponsorship and
affiliation of the disputed domain name.
It can be inferred that Respondent will use this likelihood of confusion
to its own commercial advantage. This
is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv). See Fluor Corp. v. Song, FA 102757
(Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s
<fluor.biz> domain name was identical to the Complainant’s FLUOR mark,
Internet users would likely believe an affiliation between the Respondent and
Complainant); see also Pillsbury Co. v. Prebaked Scandinavia ab,
FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain
name identical to Complainant’s mark to be in bad faith under STOP Policy ¶
4(b)(iv) when use of the domain name would likely cause confusion as to the
affiliation between Respondent and Complainant).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby granted.
Accordingly,
it is Ordered that the domain name <kodak.biz> be transferred from
Respondent to Complainant and subsequent challenges under the STOP Policy
against this domain name shall not be permitted.
James P. Buchele, Panelist
Dated:
June 25, 2002
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