WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Eastman Kodak Company v. dotqment
Case No. D2003-0769
1. The Parties
The Complainant is Eastman Kodak Company, Emeryville, California, United States of America, represented by Arnold & Porter, United States of America.
The Respondent is dotqment, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <kodakmobile.com> ("Domain Name in dispute") is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 30, 2003. On September 30, 2003, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On October 1, 2003, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing 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 for Uniform Domain Name Dispute Resolution 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 October 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on November 5, 2003.
The Center appointed J. Nelson Landry as the sole panelist in this matter on November 21, 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.
4. Factual Background
The Complainant is the owner of the trademark KODAK (the "Kodak Trademark"). The Complainant is engaged in the United States of America and at the international level in providing photographic and imaging equipment, supplies and related products and services, including those for use on the Internet, such as Kodak Pictures Center Online service. The Kodak Pictures Center Online is a mobile imaging service that enables consumers to download images from their digital photograph albums and their cellular phones.
The Complainant is the registered owner of at least 10 registrations incorporating the word mark or word and logo mark KODAK before the United States Patent and Trademark Office, over the period of 1925 to 2003. The Complainant obtained a registration for Kodak in Canada as early as 1900, and has subsequently obtained numerous trademark registrations for Kodak Trademark throughout the rest the world, including registrations in the European Community.
The Complainant has manufacturing operations in country such as Canada, Mexico, Brazil, the United Kingdom, France, Germany, Australia and the United States of America and the Kodakís products are marketed by subsidiary companies, including Ofoto, to people in more than 150 countries, including Taiwan, Province of China.
The Complainant states that it has spent substantial time, effort and money in advertising and promoting the KODAK Trademark throughout the world. The KODAK Trademark is listed in the Business Week and Interbrand amongst the top 35 most valuable brands in the world (see exhibit J). Numerous courts and UDRP panels have acknowledged and referred to the fame of the KODAK Trademark. See Eastman Kodak Co. v. Sebastian Puopolo, WIPO Case No. D2003-0196 (noting that the "trademark Kodak is considered famous") and Fleetboston Financial Corp. v. n%2fA, WIPO Case No. DBIZ2002-00157 where the panel noted that Kodak "has acquired a truly worldwide reputation as a household name".
The Complainant has also registered and used the domain name <kodak.com>. Kodakís website enables Internet users to learn information about Kodakís products and services and to purchase Kodak products. The Kodakís website provides different home pages individualized for over 50 countries, including China, Singapore and Taiwan. These home pages include various languages and contents to enable Internet users to obtain information, products and services. Through those various Kodakís homes pages, an Internet user may use hyperlink to change the country and language preferences. The Complainant states that if an Internet user chooses the link to Kodakís Taiwanese site, he or she is able to view the website. A copy of the home page for Kodakís Taiwanese website dated September 25, 2003, has been offered as evidence as Exhibit L.
Ofoto Inc. is a wholly owned subsidiary of Kodak which has its principal place of business in California, United States of America. Ofoto provides Kodakís mobile services for Complainant.
The Respondent has registered the Domain Name in dispute on April 22, 2003. In or about July 2003, Kodak discovered this registration by the Respondent and also that Respondent was using the Domain Name by directing it to a "parking page" hosted by Go Daddy.
The Complainant has shown that when an Internet user types "www.kodakmobile.com" into the address bar, he or she is directed to a single webpage displaying advertisements for Go Daddy products and wherein one can read in the web page "kodakmobile.com is coming soon! This page is parked free at GoDaddy.com!"
Complainant has also shown that Respondent dotqment is also listed as the registrant of the domain name <rockmobile.com> which is a division of Rock Mobile Corporation, a self-described Taiwan-based start-up corporation. Hence, the address information for the administrative contacts for <rockmobile.com> and <kodakmobile.com> are the same. At the same time, Joshua Maa, Chief Executive Officer of Rock Mobile, is listed as the administrative contact for <rockmobile.com> at Respondent dotqmentís address. On the basis of these facts, the Complainant states that Respondent appears to be either an alias for or a division of Rock Mobile Corporation.
On September 15, 2003, the counsel for the Complainant sent a letter via Federal Express and e-mail to Ma Liang Chun, the administrative contact for the Domain Name in dispute and dotqment, informing Respondent of Kodakís rights and demanding that Respondent transfer the <kodakmobile.com> domain name to Kodak and to cease all use of the KODAK Trademark. On September 18, 2003, Respondent replied to Complainantís letter dated September 15, 2003, stating that he would not transfer the Domain Name in dispute to Kodak and at the same time had "no plan to use [the <kodakmobile.com> domain name] now".
While the Complainant had sent its cease and desist letter to the e-mail address listed in the <kodakmobile.com> registration information, Respondent requested that replies be sent to a different e-mail address. The Complainant states that it tried to use this e-mail address and found that it was inoperable (see exhibit R).
5. Partiesí Contentions
The Complainant alleges that the Domain Name is confusingly similar to the KODAK Trademark. It further represents that KODAK is an arbitrary and inherently distinctive word which has no other meaning in English or any other language and that as a consequence of its widespread use and promotion as a trademark, the KODAK Trademark has become internationally famous and well known and has developed an enormous amount of goodwill associated therewith.
In support of its legal basis in respect of this element, the Complainant relies on several cases from various courts within the United States as well as WIPO panel decisions; Revlon Consumer Prods. Corp. v. Morel, WIPO Case No. D2002-0215; America Online Inc. v. Yeteck Communications, Inc., WIPO Case No. D2001-0055; Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500; Universal City Studio, Inc. v. G.A.B. Enter., WIPO Case No. D2000-0416 and Panavision Intíl, L.O. v. Toeppen, 141 F.3d 1316, 1326. The general contention is that the addition of the generic term "mobile" to the KODAK Trademark does not avoid the likelihood of confusion. It has been held in such circumstances that a customer who is unsure about a companyís domain name will often guess that the domain name is also the company name and the incorporation of the entire mark in a domain name implies an affiliation that simply does not exist.
The Complainant contends that the Respondent has no legitimate rights or interest with respect to the Domain Name in dispute. It further represents that it has never been known by the name KODAK or kodakmobile. The Complainant contends furthermore that this lack of legitimate interest is also demonstrated by the fact that Respondent has no intention to use the Domain Name in dispute and has simply parked it with Go Daddy.
According to the Complainant, Respondent has thus clearly demonstrated that it is not making a bona fide use of the Domain Name in dispute and has no legitimate rights or interests in the Domain Name in dispute. The Complainant relies on several WIPO decisions to support this contention; Barneyís, Inc. v. BNY Bulletin Bd., WIPO Case No. D2000-0059; Marriott Intíl, Inc, v. Thomas, Burstein & Miller, WIPO Case No. D2000-0610. The misappropriation of the <kodakmobile.com> domain name was no accident especially in the case of a world famous mark, as the one in the present instance. The Complainant represents that the KODAK word is "not one traders would legitimately choose unless seeking to create an impression of an association" with the Complainant; Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant contends that Respondentís motive for registering the Domain Name in dispute is questionable because the Complainant announced its mobile imaging service Kodak Picture Center Online, in fall 2002, before Respondent registered the Domain Name in dispute.
Considering the international use of the mark, the length of time of its use, its domain name <kodak.com>, the Complainant contends that there is no coincidence and that the Respondent could not have been unaware of the existence of the KODAK Trademark.
Complainant further contends that Respondent is affiliated with Rock Mobile, a company that purports to offer the delivery of photographs over mobile phones, and thus a potential competitor. The Complainant represents that competitive use of the Domain Name by the Respondent would not be a legitimate or bona fide use according to the decision in Technology Props., Inc. v. Personal, NAF Case No. FA96569.
The Complainant contends that Respondent has registered and used the Domain Name in bad faith. The Complainant reiterates that Respondent could not have been unaware of the Complainantís rights in the KODAK Trademark and that it is simply inconceivable that Respondent was unaware of the Complainantís rights in the KODAK Trademark which has achieved worldwide fame. Again, the Complainant has quite appropriately referred to a number decisions in support of its contention. See Bloomberg L.P. v. Boo Design Servs., NAF Case No. FA97043; Marconi Data Sys., Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Microsoft Corp. v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501.
Complainant represents that the Respondent has used the Domain Name in dispute in obvious bad faith. Again Complainant relies on a previous administrative panel decision that has held that "inactivity or non-use of a domain name by a respondent amounts to the domain name being used in Ďbad faithí". Sario Co. v. DLI, WIPO Case No. D2000-0159 and Telstra, supra.
The Complainant furthermore contends that any eventual use of the Domain Name in dispute would cause harm to the Complainant in that it would "inevitably lead to confusion of some sort" when one considers that a famous mark such as KODAK Trademark is entirely within the Domain Name in dispute. AT & T v. Rice, WIPO Case No. D2000-1276 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633.
The Complainant relies on the Telstra decision where the Panel found that the complainantís numerous trademark registrations together with the wide reputation in the name "Telstra" left no other possible interpretation of the respondentís registration other that of bad faith. The panel could not conceive of a plausible circumstance in which the respondent could legitimately use the domain name <telstra.org>. It is also not "possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration". (Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Finally, Complainant relies on the fact that Respondent has taken steps to obscure its actual identity and location and according to Complainantís representation, Respondent dotqment appears to be an alias for Rock Mobile. The proposed e-mail address is inoperable. According to the Complainant, such behavior is clearly indicative of bad faith and is misleading and misdirecting Internet users who would expect to find an official Kodak website at domain names comprised of the KODAK Trademark to be frustrated in their expectation and such behavior will ultimately harm the Complainant and its reputation.
The Complainant represents that it wishes to have Ofoto operate its domestic mobile services under the domain name <kodakmobile.com> and therefore seeks in these proceedings the transfer of the Domain Name in dispute so as to license it to Ofoto.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the domain name <kodakmobile.com> is confusingly similar with the KODAK Trademark of the Complainant for purposes of the Policy. The Domain Name in dispute incorporates in its entirety the KODAK Trademark.
The Domain Name in dispute is also confusingly similar with the website address "www.Kodak.com" of the Complainant. In the opinion of the Panel, the addition of the descriptive word "mobile" does not deter the reader from the fact that the KODAK Trademark has been taken and associated with descriptive word mobile and the suffix ".com" which result in the Domain Name in dispute.
This view and assessment of the situation by the Panel is further reinforced by the number of registrations, of countries in which the Complainant carries its business under its KODAK Trademark, the volume of business and publicity, the whole contributing to the mark of the Complainant being represented by the latter as famous, a conclusion that the Panel adopts.
The Panel finds the Domain Name in dispute is confusingly similar with the registered trademark KODAK of the Complainant.
The criteria of paragraph 4(a)(i) has therefore been met.
B. Rights or Legitimate Interests
The Complainant has made a prime facie case that the Respondent lacks rights or legitimate interests in the Domain Name in dispute by alleging that the Respondent has never been known by the name Kodak or the Domain Name in dispute, is not making legitimate non commercial or fair use of the domain name and in fact, according to Respondentís own admission, is not using the Domain Name in dispute in connection with bona fide offering of goods and services.
As shown by the Complainant, the use of the Domain Name in dispute by the Respondent is simply to divert Internet users to a competitor namely Rock Mobile with whom Complainant contends that Respondent is affiliated.
The Complainantís representations are based on several UDRP decisions supporting its representations which the Panel considers well founded. Respondent has been made aware of the Complainantís position in the Complaint that was served upon the Respondent and the latter has neglected to file any evidence which may rebut the prima facie case that Complainant has made. The Panel concludes that the Respondent has not made any use of the Domain Name in dispute in connection with the bona fide offering of goods and services.
Accordingly, there is no evidence that the Respondent has any rights or legitimate interests in the Domain Name in dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) "circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood or confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the Domain Name was registered and is used in bad faith.
The Panel has determined from the well documented evidence that the Domain Name in dispute was registered in April 2003, almost a century after the continuous extensive use and wares in several countries of a mark that has become famous on the one hand, and after the announcement by the Complainant in the fall of 2002, that Complainant was opening its Kodak Picture Center Online service and mobile imaging service which will use cellular phones in association with mobile picture albums on the other hand. The Complainant emphasizes therein its mobile imaging technology that would be used. This was easily accessible on the website of Complainant at "www.kodak.com" as put in evidence as exhibit E to the Complaint. These new services are explained in great details with several references to "mobile" imaging, the descriptive word used in the Domain Name in dispute, and these information pages end with a clear bold notice which reads " Kodak is a trademark of Eastman Kodak Co".(see exhibit E)
The Respondent was thus imitating Complainantís KODAK Trademark which had become famous when registering the Domain Name in dispute. The Panel finds that the fame of the KODAK Trademark associated with services available in Taiwan such as those illustrated in the evidence and in particular the Kodak Taiwan host workshop (see Exhibit D) which took place before the registration of the Domain Name in dispute was made, support the finding by the Panel that Respondent could not have been unaware of the existence of this well known international mark. The Panel finds that Respondent was aware of the KODAK Trademark.
The Panel, therefore, concludes that the Domain Name was registered in bad faith.
The Panel finds that the Complainant is entitled to rely on earlier UDRP Panel decisions such as Sanrio to hold that the inactivity or non use of the Domain Name amounts to use in bad faith. Alternatively, should there have been or be any use, as Complainant represents, there would necessarily have led to confusion of some sort considering the famous KODAK Trademark. One could not help but see an association between the KODAK Trademark and the Domain Name in dispute when both have the arbitrary and distinctive word "Kodak". Finally, considering the representations and evidence that Rock Mobile is a competitor of the Complainant in respect of mobile phone activities and the association of the Respondent with Rock Mobile, which have not been rebutted by Respondent, the Panel, relying on the Telstra decision, finds that it cannot conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name in dispute without causing confusion with the KODAK Trademark and harm to the Complainant.
Therefore, the Panel finds that the Domain Name in dispute was registered and is being used in bad faith.
The Panel concludes that:
(a) the Domain Name <kodakmobile.com> is confusingly similar to the Complainantís Trademark "KODAK";
(b) the Respondent has no rights or legitimate interests in the Domain Name in dispute;
(c) the Domain Name in dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kodakmobile.com> be transferred to the Complainant.
J. Nelson Landry
Dated: November 27, 2003