Kodakelectronics.com

The timeline behind kodakelectronics.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Eastman Kodak Company v. beveragetrend magazine Claim Number: FA0809001226474 PARTIES Complainant is Eastman Kodak Company (“Complainant”), represented by Kristen M. Walsh, of Nixon Peabody LLP, New York, USA. Respondent is beveragetrend magazine (“Respondent”), Nigeria. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <kodakelectronics.com>, registered with Estdomains, Inc. PANEL 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. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 29, 2008. On September 29, 2008, Estdomains, Inc. confirmed by e-mail to the National Arbitration Forum that the <kodakelectronics.com> domain name is registered with Estdomains, Inc. and that Respondent is the current registrant of the name. Estdomains, Inc. has verified that Respondent is bound by the Estdomains, 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 October 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2008 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@kodakelectronics.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On October 24, 2008, 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <kodakelectronics.com> domain name is confusingly similar to Complainant’s KODAK mark. 2. Respondent does not have any rights or legitimate interests in the <kodakelectronics.com> domain name. 3. Respondent registered and used the <kodakelectronics.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has registered the KODAK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 692,796 issued February 9, 1960) for photographic materials, apparatus and equipment. The <kodakelectronics.com> domain name was registered on August 7, 2008 and resolves to a website that utilizes the KODAK mark and logo and purports to offer cell phones and related accessories. In addition, Internet users are subjected to a series of pop-up advertisements. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar The Panel finds that Complainant has established rights in the KODAK mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). It is not necessary that Complainant have registered its trademark with an authority in the jurisdiction where Respondent is situated in order to establish rights under Policy ¶ 4(a)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”). The <kodakelectronics.com> domain name contains the generic top level domain (“gTLD”) “.com” and Complainant’s KODAK mark in its entirety. Following Complainant’s mark is the descriptive term “electronics” that describes part of the business in which Complainant engages. The inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis and the use of a word that has an obvious relationship to Complainant’s business does not distinguish the disputed domain name. As a result, the Panel finds that the <kodakelectronics.com> domain name is confusingly similar to Complainant’s KODAK mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i). Rights or Legitimate Interests Before the Panel may proceed under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Having found this to be the case here, the burden is now upon Respondent to prove that it has rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the <kodakelectronics.com> domain name, but will nonetheless examine the record in consideration of the elements listed under Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). Complainant states that Respondent is no way connected to Complainant and has no authority, license or permission to use the KODAK mark in any way. Additionally, the WHOIS information only identifies Respondent under the alias “beveragetrend magazine.” Without any additional information in the record, the Panel concludes that Respondent is not commonly known by the <kodakelectronics.com> domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The <kodakelectronics.com> domain name resolves to a website offering commercial products and goods under the KODAK mark. Internet users who engage the disputed domain name are also forced to view a series of pop-up advertisements. Various previous panels have held pop-up advertisements and the unauthorized offering of products and services under a complainant’s mark cannot constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”). The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii). Registration and Use in Bad Faith The disputed domain names resolves to a website that offers services and products in competition with those offered under Complainant’s mark. The Panel finds this to be disruptive to Complainant’s business and therefore conclusive evidence that Respondent registered and is using the <kodakelectronics.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). And finally, the Panel presumes that the series of pop-advertisements and purported offering of cell phones and other products on the website that resolves from the disputed domain name must commercial benefit Respondent in some way. Without any contradictory information in the record, the Panel considers this to be an attempt by Respondent to commercially benefit from the confusing similarity in the disputed domain name with Complainant’s KODAK mark. As a consequence, the Panel concludes that this is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii). 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 <kodakelectronics.com> domain name be TRANSFERRED from Respondent to Complainant. Judge Harold Kalina (Ret.), Panelist Dated: November 6, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.