WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eastman Kodak Company, Kodak Canada Inc. v. Sebastian Puopolo
Case No. D2003-0196
1. The Parties
The Complainants are Eastman Kodak Company an American corporation located in Rochester, New York 14650 0205, United States of America and Kodak Canada Inc., a Canadian corporation located in Toronto, ON, M6M 1V3, Canada. The Complainants are represented by Osler, Hoskin & Harcourt, LLP of Canada.
The Respondent is Sebastian Puopolo, Woodbridge, ON L4L 6K6, of Canada.
2. The Domain Name and Registrar
The disputed domain name is <kodak.net> (the "Domain Name").
The registrar is Network Solutions, Inc. (the "Registrar"), with head offices at Dulles, VA 20160, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2003.
An Acknowledgement of Receipt of Complaint was sent to Complainants and Respondent by e-mail by the Center on March 11, 2003.
On March 11, 2003, pursuant to Paragraphs 2(a) and 4 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the Center transmitted by email to the Registrar a Request for Registrar Verification in connection with the domain name at issue.
On March 14, 2003, the Registrar transmitted by email to the Center its verification response confirming that the domain name <kodak.net> was registered through its company, that Respondent is listed as the registrant of the domain name in question, that its records indicated that the Domain Name was active, and provided the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was April 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 8, 2003.
The Center appointed Erica Aoki as the sole panelist in this matter on April 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
A decision was to be delivered to the Center on or before May 1, 2003. The Panelist has independently determined, and agrees with the assessment of the Center, that the Complaint meets the formal requirements of the Policy, the Rules and the Supplementary Rules.
The language of the administrative proceeding is English, the language of the registration agreement.
4. Factual Background
Complainantsí first used the KODAK mark in Canada in 1888. The KODAK trademark was first registered in Canada on August 14, 1900. Complainants currently own 29 registered trademarks in Canada.
A copy of the each Canadian trademark registration was attached to the Complaint.
Complainantsí first use of KODAK mark in the US was on July 1, 1909. The KODAK trademark was first registered in the United States Patent and Trademark Office on February 17, 1925, for "photographic prints and enlargements". Complainants have obtained numerous US registrations for the trademark KODAK.
A copy of the each US trademark registration was attached to the Complaint.
The trademark KODAK is considered famous mark due to Complainantsí extensive use of the trademark KODAK for many years in association with photographic and imaging equipment and supplies and related services in several parts of the world.
Respondent registered the Domain Name on April 5, 1997.
5. Partiesí Contentions
Complainants contend that the Domain Name is identical to its famous trademark KODAK in which Complainants have rights; that the Respondent has no rights or legitimate interests in the Domain Name; and that the Domain Name was registered and is used in bad faith.
The Respondent did not reply to the Complainantsí contentions. As provided by paragraph 14 of the Rules, this Panel may draw such inferences from Respondentís default, as it considers appropriate.
As a domain name registrant, Respondent has a contractual obligation to submit to these proceedings. The paragraph 4 of the Policy, which is incorporated into the Registration Agreement, specifically states that the Registrant is "required to submit to a mandatory administrative proceeding" in the event of an applicable dispute under the Policy. Under these circumstances, it is appropriate to presume the facts taken from the Complaint as true for these proceedings.
6. Discussion and Findings
The Complainants were able to show the requirements specified under paragraph 4(a) of the Policy:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in respect of which the Complainants has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Based on the facts presented by Complainants, the Panel finds that the Domain Name is identical to a mark in which Complainants have rights. Complainants have shown rights in the trademark KODAK through use and registration in the U.S. and Canada.
Complainants have shown that the trademark KODAK is a famous trademark. The use in commerce of a third partyís famous mark or trade name may cause dilution of the distinctive quality of the mark.
B. Rights or Legitimate Interests
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Respondent is in default and thus has made no attempt affirmatively to show that he does have legitimate rights and interests in the Domain Name.
The Respondent is in no way connected with Complainants and has no authorization to use any of Complainantsí trademark KODAK.
The Respondent has never been commonly known by the Domain Name as an individual, business or other organization.
The Respondent is not conducting and has not shown any intention to conduct any legitimate commercial or non-commercial business under the Domain Name.
C. Registered and Used in Bad Faith
The Policy also indicates that a registrant may have a legitimate interest in a domain name if it is making a fair use of the domain name. The Respondent is not actually using the Domain Name and is exceeding the scope of permissible fair use.
The Respondent must be aware of the famous trademark KODAK, at the time of the registration of Domain Name. I found that this is evidence of bad faith in registration per the paragraph 4(b) of the Policy (Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, March 21, 2000, and National Hockey League v. Daniel Krusz, WIPO Case No. D2001-0234, April 4, 2002).
First, the registration of the Domain Name by Respondent was intended to funnel traffic from Complainants to the gambling site at "www.luckycherry.com". The Internet Service Provider responsible for hosting Respondentís website has lately removed the link from the Domain Name to the gambling website.
Registration of Domain Name identical to Complainantsí famous trademark using the name to funnel traffic for commercial profit purposes violates paragraph 4(b)(iv) of the Policy.
Respondentís registration of the Domain Name is preventing the bona fide interest of Complainants from reflecting its mark in a corresponding domain name in the gTLD ".net", violating the paragraph 4(b)(ii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kodak.net> be transferred to the Complainant, Eastman Kodak Company.
Dated: April 30, 2003