Eastman Kodak Company v. LaPorte
Holdings, Inc.
Claim Number: FA0501000396458
Complainant is Eastman Kodak Company (“Complainant”), represented
by Susan M. Freedman, of Nixon Peabody LLP, 401 9th Street, N.W.,
Suite 900, Washington, DC, 20004-2128.
Respondent is LaPorte Holdings,
Inc. (“Respondent”), 2002 S. Figueroa St., Ste. 721, Los Angeles, CA 90023.
The
domain name at issue is <kodakpicturecenter.com>,
registered with Nameking.com, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
3, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 6, 2005.
On
January 5, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <kodakpicturecenter.com>
is registered with Nameking. com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. 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
January 10, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 31, 2005 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@kodakpicturecenter.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 9, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <kodakpicturecenter.com> domain name is confusingly similar
to Complainant’s KODAK mark.
2. Respondent does not have any rights or
legitimate interests in the <kodakpicturecenter.com>
domain name.
3. Respondent registered and used the <kodakpicturecenter.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Eastman
Kodak Company, has been in the photographic and imaging business operating
under the KODAK mark since as early as July 1, 1909. Complainant has since then continuously used the KODAK mark for
photographic and imaging equipment, supplies and related services. Complainant first registered the KODAK mark
with the United States Patent and Trademark Office on February 17, 1925 (Reg.
No. 195,218). Complainant has invested
a substantial amount of time, effort and money in advertising and promoting the
KODAK mark, and as a result, has acquired an enormous amount of goodwill
associated with the mark throughout the world.
Respondent
registered the <kodakpicturecenter.com>
domain name on September 9, 2002.
Respondent is using the disputed domain name to redirect Internet users
to a website providing links related to Complainant’s business including online
photo albums, pictures and digital cameras.
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.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following
(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.
Complainant has
established that it has rights in the KODAK mark through registration with the
United States Patent and Trademark Office and through continued use of the mark
in commerce worldwide for the last ninety-six years. See 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.”); 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. Respondent has the burden of refuting this
assumption).
Respondent’s <kodakpicturecenter.com> domain
name is confusingly similar to Complainant’s KODAK mark because the domain name
incorporates Complainant’s mark and only deviates with the addition of the
descriptive word “picture” which describe Complainant’s business, and the
generic word “center”. The mere
addition of a generic or descriptive term that describes Complainant’s business
does not negate the confusing similarity of Respondent’s domain name pursuant
to Policy ¶ 4(a)(i). See Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat.
Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name
is confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <kodakpicturecenter.com> domain
name that contains Complainant’s entire mark.
Once Complainant makes 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 Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel will assume that Respondent lacks rights
and legitimate interests in the disputed domain name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant
asserts that Respondent has no rights or legitimate interests with respect to
the domain, the burden shifts to Respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
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 Complainant that Respondent has no
rights or legitimates interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate interest does exist);
see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the Respondent”).
Moreover, where
Complaint makes a prima facie showing
and Respondent does not respond, the Panel may accept all reasonable
allegations and inferences in the Complaint as true. 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec.
21, 2000) (finding that failing to respond allows a presumption that
Complainant’s allegations are true unless clearly contradicted by the
evidence).
Respondent is
appropriating Complainant’s mark in the disputed domain name to redirect
Internet users to a website providing links to competing websites related to
Complainant’s business, including online photo albums, pictures and digital
cameras. Respondent’s use of a domain
name confusingly similar to Complainant’s KODAK mark to redirect Internet users
interested in Complainant’s products and services is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). See Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan.
10, 2003) (finding that Respondent had no rights or legitimate interests in the
disputed domain name where it used Complainant’s mark, without authorization,
to attract Internet users to its business, which competed with Complainant); see also Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona
fide offering of services in a respondent’s operation of a web-site using a
domain name which is confusingly similar to the Complainant’s mark and for the
same business.”).
Additionally, nothing
in the WHOIS domain name registration information or the record suggests that
Respondent is known by the disputed domain name or by Complainant’s KODAK mark,
pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because Respondent is not commonly known by the disputed domain name
or using the domain name in connection with a legitimate or fair use); see also 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 Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through-fees by offering links to Complainant’s
competing websites. Respondent is
intentionally attempting to attract Internet users looking for information on
Complainant’s products and services to Respondent’s commercial website through
the use of a domain name that is confusingly similar to Complainant’s KODAK
mark. Respondent’s practice of
diversion constitutes bad faith registration and use pursuant to Policy ¶
4(a)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat.
Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where Respondent registered and used an infringing domain
name to attract users to a website sponsored by Respondent).
Respondent is
using the <kodakpicturecenter.com>
domain name to advertise links to various picture and camera related websites
similar to the picture and camera related services provided by
Complainant. The Panel finds that, by
creating confusion around Complainant’s mark, Respondent is attempting to
disrupt Complainant’s business.
Respondent’s use of the dispute domain name is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see also SR Motorsports v. Rotary
Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it
"obvious" that the domain names were registered for the primary
purpose of disrupting the competitor's business when the parties are part of
the same, highly specialized field).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See
Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May
18, 2000) (finding that in determining if a domain name has been registered in
bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of a domain name that incorporates Complainant’s well-known
registered mark with the addition of a generic or descriptive term, suggests
that Respondent knew of Complainant’s rights in the KODAK mark. Furthermore, the generic or descriptive term
incorporated into the disputed domain name describes Complainant’s business. Thus, the Panel finds that Respondent likely
chose the <kodakpicturecenter.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic 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 <kodakpicturecenter.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
February 23, 2005
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