National Arbitration Forum

 

DECISION

 

Eastman Chemical Company v. Kumar Patel

Claim Number: FA0507000524752

 

PARTIES

Complainant is Eastman Chemical Company (“Complainant”), represented by Carrie L. Kiedrowski of Jones Day, 1420 Peachtree Street, N.E., Suite 800, Atlanta, GA 30309-3053.  Respondent is Kumar Patel (“Respondent”), 5 Stanborough House, Wisbech, Cambs PE14 9QB, United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eastman-chemical.com>, registered with Wild West Domains, Inc.

 

PANEL

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.

 

Mr. Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 28, 2005.

 

On July 28, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <eastman-chemical.com> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 July 28, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 17, 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@eastman-chemical.com by e-mail.

 

A timely Response was received and determined to be complete on August 17, 2005.

 

A timely Additional Submission was received on August 22, 2005 from Complainant.

 

On August 25, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard as Panelist.

 

A timely Additional Submission was received on August 29, 2005 from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

Complainant submits as follows:

 

1.       Identical and/or Confusingly Similar:

 

Complainant asserts it has common law rights in the EASTMAN, EASTMAN (stylized), EASTMAN NPG, EASTMAN.COM, EASTMAN AQ and EASTMAN THE CHEMISTRY OF NEW IDEAS marks as well as statutory rights in all six marks through registration of the marks with the United States Patent and Trademark Office (“USPTO”).

 

Complainant further asserts that it has common law rights in the EASTMAN CHEMICALS mark, as Complainant has been operating under the name “Eastman Chemical” since 1967 and has been known and referred to by that name.  Furthermore, according to Complainant, the EASTMAN CHEMICALS mark is registered in over 85 countries around the world.

 

The Complainant also has rights in the EASTMAN and EASTMAN (stylized) marks through registration of the marks with the European Community Trademark Office.

 

The domain name <eastman-chemical.com> is confusingly similar to the EASTMAN trademark held by Complainant, because the disputed domain name adds a hyphen, the term “chemical”, and the generic top-level domain (gTLD) “.com” to this mark. Furthermore, the disputed domain name is confusingly similar to Complainant’s EASTMAN CHEMICALS mark, as the disputed domain name incorporates both “eastman” and “chemical”, simply adds a hyphen between these two terms and the generic gTLD “.com” to this mark.

 

Complainant is the owner of various domain names, which are used to promote its goods and services, including <eastman.com> and <eastmanchemical.com>.

 

2.      Rights or Legitimate Interests:

 

Respondent’s name is not “Eastman Chemical” and does not contain the word “Eastman”.

 

Respondent is not a licensee of, or otherwise currently affiliated with, Complainant.

 

The domain name <eastman-chemical.com> fails to point to a website.  Also, Respondent has not made any visible preparations to use the domain name: there are no “coming soon” or “under construction” indicators; there is simply an empty space-holder with no legitimate intent or right to use.

 

There is no evidence that Respondent is making a legitimate, non-commercial or fair use of the domain Name at issue. 

 

Thus, Respondent does not have legitimate rights in the domain name in question.

 

3.      Registration and Use in Bad Faith:

 

Respondent’s knowledge of Complainant’s mark must be presumed given the fame of Complainant’s marks.  It is undeniable that Respondent was aware of Complainant’s marks when he registered <eastman-chemical .com>, as he knowingly hyphenated the famous EASTMAN mark in the domain name with the word “chemical”, which describes the types of goods offered by Complainant under its mark, and thus creating the <eastman-chemical.com> domain name.  Knowingly registering a domain name, either actually or constructively, which encompasses a well known third-party trademark, is evidence of a bad faith registration and use.

 

Therefore, Respondent’s registration and passive holding of the domain name in dispute translates a bad faith intent to confuse the consuming public from misdirected traffic in search of Complainant’s official websites.  

 

B.     Respondent

 

Respondent does not claim to have any interest specifically in regards to the <eastman-chemical.com> domain name.  Respondent claims that the <eastman-chemical.com> is a non-commercial free speech website, developed as a forum for the general public to discuss and share information regarding Complainant.  Furthermore, Respondent submits as follows:

 

1.      Identical and/or Confusingly Similar:

 

Respondent submits that in registering the <eastmanchemical.com> domain name, Complainant believed that domain name to be “confusingly similar” but not identical to <eastman-chemical.com> as Complainant did not chose to register the latter domain name. 

 

Respondent claims that there is no evidence of trademark or copyright infringement under the laws of the United States and the United Kingdom. 

 

Respondent claims that the disclaimer on the preparation page which reads: “This is not the website of Eastman Chemical Inc., nor is affiliated with them in any way” demonstrates Respondent’s intent not to link the domain name in dispute to Complainant.

 

Since Complainant admits being the owner of various domain names, Respondent argues that Complainant’s absence in registering the <eastman-chemical.com> domain name translates a lack of interest of Complainant in that specific domain name. 

 

2.      Rights or Legitimate Interests:

 

Respondent argues that use of a <trademark.TLD> domain name for a bona fide criticism site gives rise to a legitimate interest.  As a non-commercial free speech public forum, Respondent does not require Complainant’s authority to use the disputed domain name or Complainant’s mark.

 

Respondent has no intention of commercial gain. 

 

Thus, Respondent is using the disputed domain as a forum for the general public to discuss and share information regarding Complainant, which is a legitimate non-commercial use.

 

3.      Registration and Use in Bad Faith:

 

Respondent is not a competitor of Complainant.

 

Even if the Respondent had knowledge of the Complainant’s trademark, Respondent is not holding the domain name passively and any allegation to that effect by Complainant is made to deliberately mislead the Panel, to deprive a registered domain name holder of a domain name, and to reverse hijack the domain name in dispute. 

 

Respondent submits that the disclaimer on the preparation page of the <eastman-chemical.com> domain name clearly dissociates this domain name from any of the domain names registered by Complainant.

 

Furthermore, Respondent has attempted to contact Complainant in order to prove its knowledge of Respondent’s legitimate interest in the domain name and to invite Complainant to discontinue his Complaint.  No input was received from Complainant.

 

Therefore, there is no demonstration of bad faith by Respondent.

 

C.     Additional Submissions

 

1.      Complainant

 

Respondent’s arguments concerning trademark infringement under the laws of the United States and the United Kingdom are wholly irrelevant to the current proceedings since the Complainant has shown that the <eastman-chemical.com> domain name was registered in bad faith pursuant to ICANN Policy ¶ 4(a)(i).

 

Respondent’s knowledge of Complainant’s Marks should be admitted based on Respondent’s own inclusion of Complainant’s EASTMAN trademark in paragraph 33 of his Response.

 

Respondent’s prior use of a disclaimer on a presently defunct website fails to prevent confusion since the EASTMAN mark is prominently displayed on the web page.

 

Respondent’s argument that the use of a hyphen between the words “Eastman” and “chemical” negates a likelihood of confusion is unsubstantiated.

 

The <eastman-chemical.com> domain name is not in active use and therefore cannot serve to establish legitimate rights.

 

Respondent has not established legitimate rights since he has failed to demonstrate that he has offered the domain name in connection with a bona fide offering of goods and services or that he is making any demonstrable preparations to do so.  Respondent merely plans to create a complaint website in the future.

 

Respondent cannot rely on a fair use defense since he registered the domain name wholly incorporating Complainant’s marks.

 

Respondent has not shown that he has a legitimate interest in the disputed domain name according to the methods outlined in the ICANN Policy.

 

Complainant contends that registration of a domain name alone is sufficient evidence of a commercial act.

 

Thus, Respondent intentionally selected the <eastman-chemical.com> domain name with full knowledge of Complainant’s rights.  Respondent is not commercially known by the domain name in dispute and cannot credibly argue that he has a legitimate fair use of the domain name in dispute.

 

Furthermore, Respondent’s intentional selection of a domain name with a slight grammatical difference, a hyphen, and his lack of current legitimate non-commercial use of the domain name are pertinent to findings of bad faith as well as of behavior typically associated with cybersquatters.

 

Respondent has made it a practice of registering domain names containing the trademarks of other companies.  Such attitude constitutes an indication of bad faith.

 

Respondent is attempting to use an intentionally misleading domain name pointing to an inactive website in order to confuse and prevent consumers of reaching Complainant’s website or leading consumers to believe that the Complainant’s site is non-functional or inexistent.

 

2.  Respondent  

 

Complainant does not have a trademark in “Eastman Chemical”, and for the marks in which Complainant does indeed have rights, Complainant only has rights for commercial use and has no exclusive rights for non-commercial purposes.

 

Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services.

 

Respondent refutes the premise that he has a practice of registering domain names, but admits having a practice of creating non-commercial free speech websites for sharing information, complaints, and criticisms about certain companies, primarily those in the pharmaceutical industry. 

 

Respondent contends that the website hosted by the <eastman-chemical.com> domain name has no impact on the Complainant’s business.

 

Respondent reiterates that he has a legitimate interest in the domain name in dispute and dispels the accusation of bad faith brought against him.

 

Respondent demonstrates clear prior knowledge on behalf of Complainant as to the preparations that he had made to use the disputed domain name thereby maintaining his claim of reverse domain name hijacking by Complainant. 

 

FINDINGS

 

Founded in 1920 to supply basic photographic chemicals for Eastman Kodak Company, Complainant, “Eastman Chemicals,” became an official division of Eastman Kodak in 1968.  In 1994 Eastman Chemical became an independent publicly-traded company and has since grown to become a global corporation and a Fortune 500 company.  It has continuously used its marks to identify a variety of products including chemicals, fibers and plastics.  It is the world’s largest producer of polyester plastics for packaging and leads the field in supplying raw materials used in the agrochemical, industrial and consumer product, photographic and pharmaceutical markets.

 

The Panel has considered the elements that both Complainant and Respondent have included in their pleadings with regards to the recent ruling in Biocryst Pharmaceuticals Inc. v. Kumar Patel, D2005-0674 (WIPO Aug. 4, 2005), involving Respondent.

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

 

(2)    the 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.

 

Identical and/or Confusingly Similar

 

Complainant has demonstrated that it has common law and/or statutory rights in the EASTMAN and EASTMAN CHEMICALS trademarks since it has used them at least as of 1967.  Complainant has provided copies of the registration certificates dating from 1951 until 1997, for which it owns the rights to a trademark from the USPTO (See Annex A of the Complaint).

 

Registration of the EASTMAN mark with the USPTO clearly establishes the Complainant’s rights in the trademark.  The Panel finds that Complainant’s registration of the EASTMAN mark with the USPTO is sufficient to establish Complainant’s rights in the EASTMAN mark.

 

Also, the Panel finds that Complainant has common law rights in the EASTMAN CHEMICALS mark, as Complainant has been operating under the name “Eastman Chemical” since 1967 and has been known and referred to by that name.  In this case, registration with the USPTO is unnecessary to establish rights in the mark and Complainant has sufficiently established its rights by showing that its mark has acquired secondary meaning as a source identifier.  Indeed, the Rules do not require that the Complainant’s trademark or service mark be registered by a government authority or agency for such rights to exist, as demonstrated in SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000).  Common law rights were also found in a mark where its use was continuous and ongoing, and secondary meaning was established.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000).  Furthermore, common law rights were acquired in Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001), where a long and substantial use of the trademark KEPPEL BANK in connection with Keppel TatLee Bank’s banking business, had conferred the bank rights under the common law.

 

The Panel finds that the disputed domain name is confusingly similar to Complainant’s marks since the domain name adds a hyphen, the term “chemical,” and the generic top-level domain (gTLD) “.com” to Complainant’s EASTMAN mark or simply adds a hyphen and the gTLD “.com” to Complainant’s EASTMAN CHEMICALS mark. 

 

In the latter hypothesis, the word “chemical” is not pluralized in the domain name in dispute whereas it is pluralized in Complainant’s mark. This may nonetheless lead to confusing similarity since Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business.  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000).      

 

The addition of a hyphen between words of Complainant’s mark is confusingly similar as shown in Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000).  Furthermore, “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants” as set forth in Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) and more recently in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003).

 

Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD “.com” are insufficient to distinguish Respondent’s domain name from Complainant’s mark.

 

For these reasons, the Panel finds the Complainant has met the first criterion as per section 4(a)(i) of the Policy in regards to the <eastman-chemical.com> domain name.

 

Rights or Legitimate Interests

 

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).  This has been demonstrated in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).

 

In order for Respondent to show his rights to and legitimate interests in the disputed domain name for the purposes of Paragraph 4(a)(ii), the circumstances in Paragraph 4(c) must be proven:

(i)      before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)    Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii)  Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The Panel finds that Complainant has successfully demonstrated that Respondent is not commonly known by the disputed domain name because its WHOIS information suggests that Respondent is known as “Kumar Patel” (See Annex E of the Complaint).

 

It is clear that Respondent is not known by the EASTMAN-CHEMICAL mark.  In addition, Respondent never applied for a license or permission from Complainant to use the trademarked name.

 

However, it is alleged by Respondent that the purpose of the website supported by the <eastman-chemical.com> domain name is to criticize and to comment on Complainant’s behavior.  Such use of the domain name is noncommercial and such activity does not translate into intent for commercial gain.  The Panel has noted a comment in Biocryst Pharmaceuticals Inc. v. Kumar Patel, D2005-0674 (WIPO Aug. 4, 2005), in which it is stated that: “In light of the wording of paragraph 4(c)(iii), absent a direct or indirect commercial element, and in the presence of a genuine, serious free speech site, the use of an exact trademark in a domain name does not, in this Panel’s view, lead one automatically to a finding of illegitimacy under the Policy.”

 

Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii).

 

Indeed, there appears to be a significant trend in allowing domain names to post criticisms about a Complainant.  Attributing free speech rights and legitimate First Amendment interests in a given disputed domain name is prevalent.  In Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), the Panel found that the respondent had free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the respondent linked the domain name to a “complaint” website about the complainant’s products.  Also, in Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001), the respondent had rights and legitimate interests in a domain name incorporating the complainant’s name at which commentary and criticism of the complainant are offered, and at which users are free to post messages about the complainant.  Similarly, in Britannia Building Society v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001), the Panel refused to transfer the domain name <britanniabuildingsociety.org> where the domain name hosted a true criticism site. 

 

Therefore, in applying this particular criterion to the facts in the present case, Respondent would have rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii) even though the domain name is confusingly similar to Complainant’s Mark  However, there are cases that lead to the opposite conclusion. 

 

In Compagnie Générale des Matières Nucléaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the Panel found that the Respondent “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . .  [and that this] is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”.  Establishment of a website containing criticism is not a legitimate use of the domain name if the disputed domain name is confusingly similar to a complainant’s mark (Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001)).

Therefore, in light of the facts in the present case, it would appear that Respondent’s main purpose in using the domain name is not for commercial gain, but rather to exercise his First Amendment right to criticize Complainant. However, Respondent uses the <trademark.com> domain name to realize this objective.  Such domain names serve merely as “source identifiers.” See OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000).  Indeed, it has already been decided that use of the principal “.com” domain name for purposes of critical commentary is not a legitimate noncommercial and fair use.  Permutations other than the “.com” domain name may include “.net” or “.org” and are indeed characterised as being legitimate non-commercial and fair uses.  In Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), use of the <trademark.net> domain name appears to be for the communicative purpose of identifying the companies, which are the subject of the complaints. In the Bridgestone case, the respondent was not misleadingly diverting users to his website, as he had not utilized the “.com” gTLD and had posted adequate disclaimers as to the source of the website.  It did not appear that the respondent’s actions were intended to tarnish, or had tarnished, the complainant’s marks.

In Monty & Pat Roberts Inc. v. J.Bartell, D2000-0300 (WIPO June 13, 2000), considering the <montyroberts.org> domain name, which led to a website containing criticisms of the Complainant, the panel concluded as follows:

Respondent’s claim to use of Complainant’s mark for legitimate news dissemination purposes is a serious one, since the Panel is greatly concerned to assure that rights of the public to freely communicate their views on the Internet are protected and preserved. However, in balancing the rights of Complainant in its mark, and the rights of Respondent to freely express its views about Complainant’s services, the Panel concludes that Respondent has impermissibly taken advantage of Complainant’s commercial interests in the mark.

[T]he right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views. One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine.

In the present case, Respondent is using a domain name which falsely conveys an association with Complainant to lead Internet users to his website.  This is even more evident by the fact that Complainant’s EASTMAN trademark figures prominently at the top of the preparation page. Respondent is thus illegitimately identifying himself as the Complainant and attracting visitors to his site by trading off the Complainant’s goodwill in its EASTMAN CHEMICALS trademark.

Regarding the <eastman-chemical.com> domain name, it appears that Respondent has used the “.com” gTLD and intends to misleadingly divert users to his website. 

With regards to the disclaimer posted on Respondent’s preparation page, the Panel finds that this disclaimer is not prominent as in Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) or obvious as in Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat.Arb. Forum, Apr. 11, 2003).  The disclaimer is written in the smallest sized font appearing on the preparation page and is aligned to the right of the page.  Internet users have already been exposed to the misrepresentation inherent in the disputed domain name once they access the preparation page.  Thus, the disclaimer cannot serve as a basis for rights and legitimate interests under Policy ¶4(a)(ii). 

As for fair use, it has been decided in Valero Energy Corporation v. American Distribution Systems, Inc., D2001-0581 (WIPO Aug. 12, 2001), that it is not the address of the web site that is protected by free speech principles, but rather the content of the web site.  In Valero Energy, whatever may have been the parodic character of the website, free speech is and must be in the content and not the address -- i.e. not the domain name itself. The <valeroenergy.com> domain name itself was not protected.  See Bandon Dunes v. DefaultData.com, WIPO D2000-0431 (July 13, 2000) (citing Compagnie de Saint Gobain. Com-Union Corp., D2000-0200 (WIPO Mar. 14, 2000) and E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug 3, 2000)).

Similarly, in the present case, the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected.  Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.

Even though there is evidence supporting the finding that Respondent had made preparations to use the disputed domain name (See Annex 8 of the Response) before any notice to Respondent of the dispute, and regardless of the explanations that Respondent raises to justify the inaccessibility of the webpage linked to the domain name <eastman-chemical.com>, the prevailing case law in this matter dictates a conclusion of lack of rights or legitimate interests under the Policy.

 

Therefore, the Panel concludes that Respondent does not have rights or legitimate interests under Policy ¶4(c)(iii) and that the Complainant has met the second criterion as per section 4(a)(ii) of the Policy, i.e. absence of rights or legitimate interest of the Respondent with regards to the <eastman-chemical.com> domain name.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Panel agrees that the elements set in Policy ¶ 4(b) are intended to be illustrative, rather than exclusive and that Complainant may present evidence that does not rely on Policy ¶ 4(b) to demonstrate that Respondent used and registered the disputed Domain Name in bad faith.  As shown in Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000),  “[j]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”

 

The circumstances enumerated in paragraph 4(b) of the Policy are not exhaustive. A finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name.  See SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport FA 94956 (Nat. Arb. Forum July 11, 2000); see also Marriott International, Inc. v. Marriot FA 94737 (Nat. Arb. Forum June 15, 2000); Canada Inc. v. Ursino AF-0211 (eResolution May 9, 2000); Centeon L.L.C. v. Ebiotech.com FA 95037 (Nat. Arb. Forum July 20, 2000).

 

Here the fame of the trademark EASTMAN is such that the Respondent must have known of the mark before registering the domain name. Indeed, Respondent’s explanation as to why he chose the disputed domain name demonstrates that he did so with the Complainant’s name and mark EASTMAN in mind.

 

The Panel agrees that Respondent is not a “competitor” for the purposes of Paragraph 4(b).

 

It is irrelevant that a Complainant may have other domain names or has not chosen to register the domain name under dispute. 

 

Furthermore, Complainant argues that registering its mark with the USPTO confers constructive knowledge on Respondent.  Indeed, in Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002), the Panel found that “Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”

 

The Panel finds that Respondent had constructive knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name.  Respondent even admits to such knowledge in Paragraph 41 of his Response. 

 

The Panel thus concludes that Respondent’s constructive knowledge of Complainant’s rights in the mark at the time of registration is evidence of bad faith use and registration under Policy ¶ 4(a)(iii).  Indeed, according to Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”  Similarly, in Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000), the Panel found that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration.

Registration of a domain name which incorporates the trademark of another prevents the trademark owner from reflecting that mark in a corresponding domain name. Under paragraph 4(b)(ii) of the Policy, registering a domain name for such a purpose is evidence of both bad faith registration and bad faith use provided there has been a pattern of such conduct

 Respondent has indeed registered another <trademark.com> domain name incorporating a well-known pharmaceutical company name in almost identical circumstances (Biocryst Pharmaceuticals Inc. v. Kumar Patel (WIPO D2005-0674)).  However, in the Biocryst Pharmaceuticals Inc. decision, there was no conclusion of bad faith.   In the Panel’s opinion, the analysis of paragraph 4(b)(ii) in Biocryst was very limitative, if not completely overlooked.  In Biocryst, the sole admission of the Respondent to the effect that he had registered several other domain names incorporating the marks of other pharmaceutical companies was not sufficient on its own to establish bad faith.  The Panel does not agree that the finding of absence of bad faith is sufficiently substantiated in Biocryst.  

In the case at hand, Respondent argues that the fact that he posted a disclaimer on his website precludes a finding of bad faith because it shows that he did not intend to attract Internet users to its websites by creating a likelihood of confusion with Complainant’s mark.  In Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000), the Panel refused to find bad faith where the respondent conspicuously informed viewers that his site was not affiliated with the complainant and alternatively finding that such a disclaimer was evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.  Similarly, in Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003), the Panel concluded that the disclaimer was at least evidence of good faith use of the domain names.

 

The preparation page annexed as Evidence 8 in the Response illustrates Respondent’s disclaimer.  The Panel notes that Complainant’s EASTMAN trademark is obviously posted at the top of Respondent’s preparation page.  The characters comprising the EASTMAN mark clearly stand out because of their prominent size, whereas the rest of the text on the preparation page is smaller in size.  The disclaimer is written in the smallest sized font and is aligned to the right of the preparation page contrary to the rest of the text which is centrally aligned.  It would also appear that, in order of importance according the presentation on the preparation page, the disclaimer would be the fourth element under the EASTMAN trademark, the description of the <eastman-chemical.com> website, and the e-mail address to which the Internet visitors’ stories may be sent. 

 

Therefore, the Panel finds that the disclaimer would have been ignored had the website been in use.  The disclaimer would also have failed to dispel initial interest confusion.  Indeed, such confusion is a basis for finding a violation of Complainant’s rights.  See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000).

 

Furthermore, the Panel finds it illogical to conclude in an absence of bad faith when

Respondent is attempting to defeat the ambit of protection offered by a trademark. By misleading Internet users who might be legitimately looking for Complainant’s website and attracting them to a complaint site with the <eastman-chemical.com> domain name, Respondent is diverting potential customers away from Complainant.  Effectively, Respondent is acting as an impersonator by posing as Complainant.  Although Respondent does indeed have a commendable goal in providing a free speech forum for criticizing Complainant’s activities, this goal can be reached without usurping one of Complainant’s important assets, i.e. its trademark.

 

Therefore, the Panel concludes that the registration of the disputed domain name was made in bad faith. 

 

Reverse Domain Name Hijacking

 

Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”  This is reiterated in Paragraph 15(e).  To prevail on such a claim, a Respondent must show that the Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.

 

In its Additional Submission, Complainant argues that it did not engage in reverse domain name hijacking because Respondent is not currently using the website for a legitimate purpose and had not been using it for several weeks prior to the filing of the Complaint.  Moreover, Complainant argues that the Policy does not impose a duty upon it to investigate whether the content of a website has changed and Respondent’s reasons for such a change. 

 

The Panel concludes that Complainant did not begin this action in bad faith and that there is no support for reverse domain name hijacking.  This opinion is supported by World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectables, D2000-1306 (WIPO Jan 24, 2001), where the Panel found that “because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.” 

 

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <eastman-chemical.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Mr. Hugues G. Richard, Panelist
Dated: September 7th, 2005

 

 

 

 

 

 

 

 

 

 

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