Eastman Kodak Company v. free enda / upot
Claim Number: FA1610001698767
Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is free enda / upot (“Respondent”), Colorado.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freekodak.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2016; the Forum received payment on October 18, 2016.
On October 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freekodak.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2016 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@freekodak.us. Also on October 20, 2016, 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 November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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
[i.] Complainant Kodak has continuously used its world famous mark, KODAK, for photographic and imaging equipment and supplies, and related services, since at least 1888. The United States Patent and Trademark Office first registered the KODAK mark on February 17, 1925 for “photographic prints and enlargements.” 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, including, for example, the following: Reg. Nos. 195218, 387692, 396694, 396975, 399092, 406762, 692796, 763542, 928096, 2033737, 2040245, 2709564, 3031743, and 4041704. These registrations are in full force and effect, unrevoked, and uncancelled.
[ii.] Complainant has spent substantial time, effort, and money in advertising and promoting the KODAK mark throughout the world. As a consequence, the KODAK mark is world famous and well known, and has developed an enormous amount of goodwill associated therewith. Numerous courts and UDRP panels,1 in addition to the United States Congress, have acknowledged and referred to the fame of the KODAK mark. See, e.g., TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 99 (2d Cir. 2001) (noting, in the context of dilution legislation, Congress’s examples of famous marks such as DuPont, Buick and Kodak which “for the major part of the [20th] century have been household words throughout the United States,”); Eastman Kodak Co. v. dotqment, WIPO Claim No. D2003-0769 (2003) (holding that the KODAK mark is famous); Eastman Kodak Co. v. Sebastian Puopolo, WIPO Claim No. D2003-0196 (2003) (noting that the “trademark Kodak is a famous trademark”).
1 Due to the similarities between the usTLD Policy and the Uniform Domain Name Dispute Resolution Policy, Forum panels frequently draw upon UDRP precedent as applicable in decisions under the usTLD Policy. See, e.g., Philip Morris USA Inc. v. Deborah Gowrie, Forum Claim No. FA1606001677734 (2016) (“Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.”); Dell Inc. v. BHUWANESHWAR KC / mmm bbb, Forum Claim No. FA1605001675190 (2016) (“Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.”).
[iii.] In addition, Complainant has registered and uses the domain name KODAK.COM for its website. Internet users can use the Kodak website to learn information about Complainant’s products and services, and to purchase Kodak products.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: Rule 3(c)(ix).
[a.] The domain name FREEKODAK.US (the “Disputed Domain Name”) is confusingly similar to Complainant’s registered trademark, KODAK, and to Complainant’s website address, KODAK.COM, because it contains the KODAK mark in its entirety. The addition of the generic word “free” and the top-level domain “.us” does not avoid a likelihood of confusion, particularly given that the term “free” implies that a consumer may be able to obtain “free” KODAK products through the website. See NIKE, Inc. v. RAM PATEL, Forum Claim No. FA1607001684705 (2016) (under the usTLD Policy,“[a]dding descriptive words to Complainant’s trademark does nothing to distinguish the <nikefreedeal.com> domain name from Complainant’s trademark, particularly when the added terms obliquely suggest Complainant’s retail related business”); Eastman Kodak Co. v. beveragetrend magazine, Nat. Arb. Forum Claim No. FA0809001226474 (2009) (under the UDRP, kodakelectronics.com held confusingly similar to the KODAK mark because it contains the KODAK mark in its entirety and a descriptive term); Eastman Kodak Co. v. Daniel Kaufman, Nat. Arb. Forum Claim No. FA0407000305277 (2004) (under the UDRP, mykodak.com held confusingly similar to the KODAK mark because it incorporates that mark in its entirety, adding only the generic or descriptive word “my”); Eastman Kodak Co. v. dotqment, WIPO Claim No. D2003-0769 (2003) (under the UDRP, kodakmobile.com held confusingly similar to the KODAK mark and to the website address www.kodak.com); Eastman Kodak Co. v. Dionne Lamb, Nat. Arb. Forum Claim No. FA97644 (2001) (under the UDRP, the disputed domain names that contained the KODAK mark in its entirety along with some generic word or words that describe Kodak’s business held confusingly similar to the KODAK mark). Rule 3(c)(ix)(1); Policy ¶4(a)(i).
[b.] Respondent does not meet the criteria in Paragraph 4(c) of the Policy for demonstrating rights or legitimate interests in the domain name FREEKODAK.US. Rule 3(c)(ix)(2); Policy ¶4(a)(ii).
[i]. There is no evidence that Respondent has been commonly known by the domain name FREEKODAK.US. 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.
[ii.] 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 services provided by Respondent.
[iii.] Respondent uses the Disputed Domain Name to display graphic, offensive pornographic images by redirecting Internet users to the website www.pornhub.com. Because of the nature of the images, Complainant is not submitting representative printouts from this website at this time, but will do so as part of any Reply or further response, if any, filed in connection with this proceeding. Use of the Disputed Domain Name to redirect Internet uses to pornographic content is not a use in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(ii), or a legitimate noncommercial or fair use of the domain pursuant to Policy 4(c)(iv). See, e.g., Google Inc. v. Gongsi, Nat. Arb. Forum Claim No. FA0803001159972 (2008) (under the UDRP, using a website to advertise and display adult-oriented videos and content is not a bona fide offering of goods or services under ICANN Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under ICANN Policy ¶4(c)(iii)); Goldman, Sachs & Co. v. Wevers, Nat. Arb. Forum Claim No. FA0610000812109 (2006) (under the UDRP, holding that use of the disputed domain to redirect Internet users to Respondent’s website featuring adult-oriented content “is not a bona fide offering of goods or services as Respondent is using Complainant’s marks to attract Internet users, tarnishing Complainant’s marks and public goodwill in the process”); Paws, Inc. v. Zuccarini, Nat. Arb. Forum Claim No. FA0209000125368 (2002) (under the UDRP, it is “neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use . . . when the holder of a domain name that is confusingly similar to an established mark diverts Internet users to pornographic sites. Such use tarnishes Complainant’s mark . . . .”). See also State Farm Mut. Auto. Ins. Co. v. LaFaive, Nat. Arb. Forum Claim No. FA95407 (2000) (under the UDRP, “[t]he unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); America Online, Inc. v. Tencent Commc’n Corp., Nat. Arb. Forum Claim No. FA93668 (2000) (under the UDRP, finding that use of the complainant’s well known mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
[iv] Upon information and belief, it appears that Respondent has provided false contact information in connection with its registration of the FREEKODAK.US domain name, which is a further indication that Respondent has no rights or legitimate interests in the FREEKODAK.US domain name. For example, Complainant is unaware of any street named “homeless” located in any Colorado town, city, or village with the name “sads,” and the zipcode 23421 is located in Virginia, not Colorado. See Dell Inc. v. BHUWANESHWAR KC / mmm bbb, Forum Claim No. FA1605001675190 (2016) (under the usTLD Policy, “this Panel find Respondent has not acquired any rights by registering the disputed domain names because Respondent concealed its true identity by providing false WHOIS information”).
[v.] On September 20, 2016, after learning of the website www.freekodak.us, Complainant’s counsel sent a cease and desist letter to Respondent, via e-mail at the e-mail address provided on the WHOIS record (wqrkyt@gmail.com), requesting that Respondent cease all use of FREEKODAK.US, and transfer the domain name to Complainant. Complainant has received no response to this letter. Respondent’s failure to respond to Complainant’s request further suggests that Respondent has no rights or legitimate interests in FREEKODAK.US.
[c.] Respondent registered and is using the domain name FREEKODAK.US in bad faith as explained below. Rule 3(c)(ix)(3); Policy ¶4(a)(iii).
[i]. Because the KODAK mark is arbitrary, distinctive, and world famous, 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., Nat. Arb. 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)”); Exxon Mobil Corp. v. Fisher, WIPO Claim No. D2000-1412 (2000) (under the UDRP, finding bad faith registration of the disputed domain name based on respondent’s actual and constructive knowledge of complainant’s EXXON mark based on the worldwide prominence of the EXXON mark). It is inconceivable that Respondent could have been unaware of the KODAK mark at the time it registered the domain name FREEKODAK.US. Rather, Respondent’s misappropriation of the mark KODAK by registering the Disputed Domain Name appears to be intentional, willful, and in bad faith. See, e.g., Michelin N. Am., Inc. v. Energie Media Group, Nat. Arb. Forum Claim No. FA1207001451882 (2012) (under the UDRP, 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)”; Yahoo! Inc. v. Ashy, WIPO Claim No. D2000-0241 (2000) (under the UDRP, finding that the fame of the YAHOO! Mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); Sony Kabushiki Kaisha v. Inja, Kil, WIPO Claim No. D2000-1409 (2000) (under the UDRP, finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). Accordingly, the 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 FREEKODAK.US domain name in bad faith pursuant to usTLD Policy ¶4(a)(iv).
[ii] Respondent’s registration of the Disputed Domain, which contains the whole of Complainant’s famous KODAK trademark, and redirection of that domain to a website showing graphic, offensive pornographic images 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) (under the UDRP, “[r]egistering 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 . . . offends the Policy”). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, Forum Claim No. FA1312001534740 (2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley- davidsonsales.com> domain name to tarnish Complainant’s HARLEY- DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Moreover, 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., Andrey Ternovskiy v. Abdelbasset Selmi, Forum Claim No. FA1509001638963 (2015) (under the usTLD Policy, “[u]sing a domain name identical to Respondent’s trademark [to display pornographic content] indicates bad faith registration and use under Policy ¶4(b)(iv)”). See Goldman, Sachs & Co. v. Wevers, Nat. Arb. Forum Claim No. 0610000812109 (2006) (under the UDRP, “the use of domain names which are confusingly similar to third party trademarks for commercial adult or pornographic content is a bad faith use”); Target Brands, Inc. v. Niazov, Nat. Arb. Forum Claim No. FA0412000381229 (2005) (under the UDRP, “Respondent’s use of a domain name confusingly similar to Complainant’s famous mark to direct Internet users to a website featuring pornographic material is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy 4(a)(iii)”); Google Inc. v. Bassano, Nat. Arb. Forum Claim No. FA 232958 (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)); Paws, Inc. v. Zuccarini, Nat. Arb. Forum Claim No. FA125368 (2002) (under the UDRP, “[e]vidence of bad faith when diverting Internet users is even stronger when the diversion sends users to a pornographic website”).
[iii.] Because of the fame of the KODAK mark, there is no plausible circumstance in which the Respondent could legitimately use the domain name FREEKODAK.US without causing confusion with the mark KODAK and harm to Kodak. See, e.g, Eastman Kodak Co. v. dotqment, WIPO Claim No. D2003- 0769 (2003) (reaching the same conclusion with respect to KODAKMOBILE.COM); Orphan Med., Inc. v. Charlton, Nat. Arb. Forum Claim No. FA0205000112608 (2002) (finding registration in bad faith where the trademark used as the disputed domain name was so “unique and distinctive so as to preclude any plausible explanation for registration and use”); Northwest Airlines, Inc.v. Koch, Nat. Arb. Forum Claim No. FA0009000095688 (2000) (“the selection of a domain name <northwest-airlines.com> which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”).
[iv.] Respondent’s provision of what, upon information and belief, appears to be false contact information in connection with the registration of the domain name FREEKODAK.US, presumably to conceal its true identity, is further evidence that Respondent has engaged in bad faith use and registration of the disputed domain name under Policy ¶4(a)(iii). See e.g., Dell Inc. v. BHUWANESHWAR KC / mmm bbb, Forum Claim No. FA1605001675190 (2016) (under the usTLD policy, finding that use of incorrect WHOIS information is evidence of bad faith use and registration pursuant to Policy ¶4(a)(iii)); McDonald’s Corp. v. The Holy See, Nat. Arb. Forum Claim No. FA0304000155458 (2003) (under the UDRP, “Respondent provided false contact information in the registration certificates and . . . such actions, even though not specifically enumerated in the policy, may form the basis for a finding of bad faith registration and use”).
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent the following email to the Forum: “whats [sic] going on, if you want the domain i can sell it to you but this bullshit your [sic] doing isnt [sic] getting you anywhere.”
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 in the KODAK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 195,218, registered on February 17, 1925), which it uses for photographing and imaging equipment and supplies. USPTO registrations are considered prima facie evidence of complainants’ rights in their asserted marks. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO), Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); and see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption). Registration with the USPTO is not required to prove rights in a mark, although registration with some governmental authority makes it easier to prove Complainant’s rights in the mark. Complainant is not required to prove it has rights where Respondent is located (which would be difficult to demonstrate because Respondent registered the domain name using fictitious information which is inconsistent. While claiming to be from Colorado, Respondent used a Virginia zip code). Using the street address of “homeless” was a cute touch and indicative of Respondent’s disregard of its obligations. Complainant merely has to prove it has some rights some where. Complainant has done this and Respondent has failed to submit a response. 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).). Respondent has rights in the KODAK mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <freekodak.us> domain name is confusingly similar to the KODAK mark because it contains the mark along with the term “free” and the ccTLD “.us.” The Kodak trademark is undoubtedly famous and is among the few trademarks of the world used as examples of “fanciful trademarks.” The term “free” is generic, and therefore disregarded under a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is also disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Forum Nov. 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶4(a)(i) analysis); ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”); Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶4(a)(i) analysis.).. The <freekodak.us> domain name is confusingly similar to the KODAK mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant does not argue Respondent doesn’t own a mark identical to the <freekodak.us> domain name. However, Respondent has failed to argue it does and the ultimate burden of proof rests upon Respondent to prove it owns an identical mark. After all, Complainant cannot prove a negative. Respondent has failed to offer any evidence at all on this point, leading the Panel to conclude Respondent does not own a similar mark. See HOM INNOVATIONS POUR L’ELEGANCE MASCULINE and HUBER HOLDINGS ASIA Limited v. PHMC GPE, FA 1658722 (Forum March 14, 2016) (finding that Respondent was not the owner or beneficiary of a trade or service mark identical to the disputed domain name under Policy ¶4(c)(i), even when Complainant did not argue this point); see also Kayak Software Corporation (Delaware Corporation) v. ITlinks.com, FA 1647695 (Forum Dec. 18, 2015) (finding that Respondent did not submit any evidence to satisfy its burden to demonstrate evidence of a trademark on which the disputed domain is based per Policy ¶4(c)(i).). Certainly Complainant is further hampered in proving a negative because Respondent’s true identity and location is not known. Respondent did not provide accurate WHOIS information when it registered the disputed domain name as required by ICANN’s 2013 Registrar Accreditation Agreement with Registrars.
Complainant claims Respondent is not commonly known by the <freekodak.us> domain name because it has no connection to Complainant that would allow for use of the KODAK mark, the fame of the mark precludes Respondent’s ability to be so known, and there is no evidence to suggest that Respondent is so known. The WHOIS information bears no relation to the disputed domain name and Respondent has not provided any information to the contrary. Given there is no evidence to support a finding Respondent is commonly known by the domain name, this Panel will find Respondent is NOT known by the domain name under Policy ¶4(c)(ii). Furthermore, Respondent did not disclose its true identity in the WHOIS information. In light of this fact, there is a rebuttable presumption Respondent is not known by the disputed domain name. Respondent has done nothing to rebut this presumption. Therefore, this Panel finds Respondent is not commonly known by the domain name under Policy ¶4(c)(ii).
Complainant claims Respondent fails to use the <freekodak.us> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website redirects internet users to <pornhub.com>. Using a domain to forward to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(ii) and Policy ¶4(c)(iv) (unless the business in question is pornography, of course). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited-, FA 1603444 (Forum March 19, 2015) (holding that, generally, a disputed domain which hosts adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Finally, Respondent has not disclosed its true identity when Respondent registered the domain name. This means Respondent has done nothing to publicly associate itself with the domain name. This means Respondent could not have acquired any rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <freekodak.us> domain name in bad faith because the resolving website redirects internet users to <pornhub.com>. While the domain name does not currently redirect to <pornhub.com>, the current web page has no content. Therefore, this Panel finds Respondent uses the <freekodak.us> domain name in bad faith according to Policy ¶4(b)(iv). See Google Inc. v. Bassano, FA 232958 (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)).
Complainant claims Respondent registered the <freekodak.us> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the KODAK mark. Complainant’s mark is arbitrary, distinctive, and famous, so it would be extremely unlikely for another to use the mark as part of a domain name unless attempting to create an impression of association between the domain name and Complainant. It is inconceivable Respondent didn’t know of Complainant and its KODAK mark. It seems obvious the domain was registered and used in bad faith, especially in light of Respondent’s email offering to sell the domain. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Finally, Respondent didn’t provide truthful WHOIS information when it registered the disputed domain name on August 23, 2016 (which is more than 107 years after Complainant began using its mark). In a commercial context (which this is), this raises a refutable presumption the domain was registered and used in bad faith. Respondent has not done anything to rebut this presumption. Therefore, this Panel is comfortable finding bad faith registration and use on those grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <freekodak.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, November 23, 2016
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