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.
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.
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.
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.
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
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page