Eastman Kodak Company v. Igor Zaicev
Claim Number: FA0905001262000
Complainant is Eastman
Kodak Company (“Complainant”), represented by Kristen M. Walsh, of Nixon Peabody LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kodakeasysexnk.com>, registered with Communigal Communications Ltd.
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 A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 12, 2009.
On May 21, 2009, Communigal Communications Ltd. confirmed by e-mail to the National Arbitration Forum that the <kodakeasysexnk.com> domain name is registered with Communigal Communications Ltd. and that Respondent is the current registrant of the name. Communigal Communications Ltd. has verified that Respondent is bound by the Communigal Communications Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 10, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@kodakeasysexnk.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <kodakeasysexnk.com> domain name is confusingly similar to Complainant’s KODAK mark.
2. Respondent does not have any rights or legitimate interests in the <kodakeasysexnk.com> domain name.
3. Respondent registered and used the <kodakeasysexnk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eastman Kodak Company, is a worldwide producer of imagery and photography materials and equipment and has used the KODAK mark since as early as 1909. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the KODAK mark (i.e., Reg. No. 195,218 issued September 20, 1905).
Respondent registered <kodakeasysexnk.com> domain name on March 20, 2009. Respondent is using the disputed domain name to redirect Internet users interested in Complainant’s products to a website featuring adult-oriented images and content for Respondent’s commercial advantage.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
The panel finds Complainant has established rights under
Policy ¶ 4(a)(i) in the KODAK mark through its registration
with the USPTO. See Expedia, Inc. v. Tan, FA 991075
(Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is
registered with the USPTO, [the] complainant has met the requirements of Policy
¶ 4(a)(i).”); see
also Metro. Life
Ins. Co. v. Bonds, FA
873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately
demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <kodakeasysexnk.com> domain name is confusingly similar to Complainant’s KODAK mark because Respondent’s name incorporates the KODAK mark, adds the generic phrase “easy sex nk,” and adds the generic top-level domain “.com.” See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <kodakeasysexnk.com> domain name.
Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due
to Respondent’s failure to respond to the Complaint, the Panel may assume that
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the domain name under Policy ¶ 4(i). See Domtar, Inc. v. Theriault., FA
1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a
complainant has made out a prima facie case
in support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is using the <kodakeasysexnk.com> domain name to operate a website featuring adult-oriented
images and content for Respondent’s commercial advantage. Respondent’s use of a domain name that is
confusingly similar to the KODAK mark to redirect Internet users interested in
Complainant’s products to a website with adult-oriented content is not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002)
(holding that the use of a domain name that is confusingly similar to an
established mark to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”); see
also Vivendi Universal
Games v. Chang, FA 206328 (Nat. Arb. Forum
Dec. 17, 2003) (finding that the respondent did not use a domain name in
connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the domain
name to divert Internet users seeking the complainant's goods or services to adult-oriented
material and links, while presumably earning a commission or referral fees from
advertisers).
Respondent has
offered no evidence and there is no evidence in the record suggesting that
Respondent is commonly known by the <kodakeasysexnk.com> domain
name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the KODAK mark, and the WHOIS information identifies Respondent as “Igor
Zaicev.” Thus, Respondent has not
established rights or legitimate interests in the <kodakeasysexnk.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat.
Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also IndyMac Bank F.S.B. v.
Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006)
(finding that the respondent failed to establish rights and legitimate
interests in the <emitmortgage.com> domain name as the respondent was not
authorized to register domain names featuring the complainant’s mark and failed
to submit evidence of that it is commonly known by the disputed domain name);
see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii).
Respondent is using <kodakeasysexnk.com> domain name, which is confusingly similar to Complainant’s KODAK mark, to redirect Internet users to Respondent’s website featuring adult-oriented images and content for Respondent’s commercial advantage. Therefore, Respondent’s use of the <kodakeasysexnk.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that the respondent registered the <holidayinnakron.com> domain name and linked it to a adult-oriented website. The panel stated, “[W]hatever the motivation of Respondent, the diversion of the domain names to a adult-oriented site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kodakeasysexnk.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 1, 2009
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