WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Polaroid Corporation v. Andrey Michailov
Case No. D2004-0844
1. The Parties
The Complainant is Polaroid Corporation, of Waltham, Massachusetts, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is Andrey Michailov, of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <polariod.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2004. On October 14, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 15, 2004, eNom replied by email to the Center asking the Center to check its WHOIS for this information. A printout of this, supplied to the Panel by the Center, confirms that the Respondent is listed as the registrant as well as being the administrative, billing, and technical contact; it also provides his contact details. 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 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2004.
The Center appointed Mr. David H Tatham as the sole panelist in this matter on November 19, 2004. 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 submitted the following factual and legal grounds in support of its Complaint.
The Complainant was founded in 1937 and has expended substantial effort and hundreds of millions of dollars promoting and advertising its cameras, film and other photography and consumer electronic goods under its POLAROID trademark. As a result the Complainant has generated many billions of dollars of sales and the POLAROID name and mark have become known to consumers worldwide as symbolizing the Complainant as a source of extremely high quality goods and services. Through these efforts, the Complainant has built up substantial goodwill in its POLAROID trademark among consumers both in the USA (where it has its base) and throughout the world, and the name and trademark POLAROID has become one of its most valuable assets.
∙ The Complainant has obtained dozens of US registrations for marks consisting of or containing the term POLAROID, many of which are now incontestable, and the Complainant provided the Panel with printouts of these registrations. The Complainant also owns hundreds of registrations of the trademark POLAROID in jurisdictions all over the world, and printouts of a number of such registrations in 9 separate jurisdictions, including the European Union, were annexed to the Complaint. Details of the others were offered to the Panel if it so required.
∙ The Complainant has also registered several top level domain names containing its POLAROID mark, including <polaroid.com>, and it annexed copies of pages from its official website which is maintained at this address.
∙ As a result of the Complainant’s long-standing and extensive use and promotion of the trademark POLAROID the mark has acquired distinctiveness and secondary meaning signifying the Complainant, as well as an unparalleled amount of consumer recognition and goodwill.
∙ The Complainant annexed copies of two cases in which the trademark POLAROID had been found to be a famous mark – a domain name dispute Polaroid Corp. v. Damian Macafee FA 96660, and Polaroid Corp. v. Polaraid Inc. 319 F.2d 830, 831 (7th Circ. 1963)
The Respondent did not reply.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
∙ The Respondent registered the disputed domain name on October 31, 2000 which was over 60 years after the Complainant adopted the trademark POLAROID and first began to use it, and long after the mark had acquired its distinctiveness and secondary meaning. However the Complainant only first became aware of the disputed domain name in early September 2004.
∙ Internet users, when inputting the disputed domain name, are automatically referred to a page, consisting of results for the term “Polaroid cameras”, operated by Euroseek which is an advertising-driven online search engine maintained at “www.usseek.com” and a copy of this website was annexed to the Complaint.
∙ The Respondent registered and is using the dispute domain name in order to confuse the public as to its source, sponsorship, or affiliation and to trade upon the significant goodwill and extensive promotional efforts associated with the Complainant’s own famous trademark POLAROID in violation of the Policy.
∙ The Respondent’s registration and use of a variation of the Complainant’s famous name and trademark is an example of ‘typosquatting’ which attracts Internet users who mis-type the correct name which they are looking for and then – in this case – re-direct them to an advertising-driven site for which the Respondent undoubtedly receives a fee.
∙ The disputed domain name is virtually identical and confusingly similar to the Complainant’s famous trademark because it is merely a typographical misspelling of it, and the Complainant annexed to the Complaint copies of two domain name dispute decisions in support of this contention, in one of which the Respondent himself was one of the Respondents. Further, the addition of ‘.com’ does not distinguish the disputed domain name from the Complainant’s trademark POLAROID.
∙ The Respondent cannot establish a legitimate right to, or interest in, the disputed domain name because:
∙ He is not referred to or commonly known by the disputed domain name;
∙ He does not own any US, EU or other trademark registration for the terms ‘polariod’ or ‘polaroid’.
∙ The Complainant has never licensed or otherwise authorised him to use its famous trademark POLAROID.
∙ He is not making a legitimate, non-commercial, or fair use of the disputed domain name; on the contrary he is using it to confuse and divert Internet users to an advertising-driven search engine.
∙ He has no legitimate business relating to or incorporating the terms ‘polariod’ or ‘polaroid’, nor does he have any identifiable history of using either of these terms in connection with a bona fide offering of goods or services.
∙ Even if the advertising-driven search engine to which users are diverted when entering the disputed domain name did offer goods or services to customers, such an offer cannot be bona fide since such use is undertaken in an attempt to confuse and to trade off the Complainant’s famous trademark POLAROID. This confusion is confounded by the fact that the goods offered on the diverted page feature genuine POLAROID photographic products and other information concerning the Complainant’s products and services.
∙ The name and trademark POLAROID is a coined word that has achieved fame among consumers worldwide, so the Respondent would not have chosen the disputed domain name unless he was seeking to create an impression of an association with the Complainant. Thus he cannot establish a legitimate right to, or interest in, the disputed domain name.
∙ The Respondent has registered and used the disputed domain name in bad faith because, given the fame of the Complainant’s trademark coupled with its inherently arbitrary nature, it is inconceivable that the Respondent could have innocently registered the disputed domain name without having a design to exploit its similarity to the Complainant’s famous trademark and its website.
∙ The Respondent was put on constructive notice of the Complainant’s rights in its POLAROID trademark before registering the disputed domain name by virtue of the Complainant’s worldwide trademark registrations, so he cannot disingenuously claim ignorance of the trademark, and it is indisputable that he registered and started to use the disputed domain name with knowledge of the mark and in order to capitalize, benefit from, and trade upon the Complainant’s long established reputation and goodwill.
∙ The Respondent’s bad faith is further demonstrated by the pattern of abusive domain name registrations with which he has been associated. Other panels have issued decisions against the Respondent either under the name ‘Andrew Michailov’ or one of the several aliases under which he has operated in registering dozens of other ‘typosquatted’ domain names that were confusingly similar to well-known and/or famous trademarks owned by other Complainants; and the Complainant annexed to the Complaint copies of four such cases.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a Response, not only will the Panel accept as true all of the factual contentions made by the Complainant, but the Respondent is also in default, in accordance with paragraph 6 of the Notification of Complaint. Nevertheless, even though there has been no response, the Panel must still, under paragraph 14(a) of the Rules “proceed to a decision on the complaint” which it will now do.
Paragraph 4(a) of the Policy states that in order to be successful, the Complainant has the burden of proving that all of three elements are present in its Complaint, namely:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant 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 is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has very substantial rights in the name and trademark POLAROID, which is actually an invented word, and that this name is famous. The only difference between it and the disputed domain name is that in the latter two of the letters in the third and final syllable have been transposed. Also it is customary, as the Complainant has pointed out, when comparing a trademark and a disputed domain name, to ignore the ‘.com’ suffix. Thus, there is absolutely no doubt that the disputed domain name, < polariod.com> is confusingly similar to the trademark POLAROID and the Panel finds accordingly.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, if present, could demonstrate that a Respondent has a legitimate right to or an interest in a disputed domain name.
The Complainant has undoubtedly established an arguable case, so the burden of proof is therefore now shifted to the Respondent to show, by providing concrete evidence, that he has rights to or legitimate interests in respect of the disputed domain name.
The Panel is unable to think of any reason why the Respondent could reasonably be said to have rights or legitimate interests in respect of the disputed domain name, which is so close to the Complainant’s famous name and mark.
Furthermore by his default, the Respondent has done nothing to contest the allegations of the Complainant that he lacks any rights or legitimate interests in the disputed domain name. Consequently, since no circumstance has been evidenced by the Respondent that could reasonably support an inference in its favour under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain name and that paragraph 4(a)(ii) has therefore been proven.
C. Registered and Used in Bad Faith
By its default, the Respondent has also not responded directly to the allegation of the Complainant that the Respondent registered the domain name in bad faith. The burden of proof for doing so is on the Complainant which, in the opinion of the Panel, it has fully discharged. Paragraph 4(b) of the Policy sets out various circumstances which could constitute evidence of registration and use in bad faith, and in the opinion of the Panel, the Respondent has committed three of them. For example:
4(b)(ii) he has not only registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, but on the evidence presented by the Complainant he is a serial cybersquatter. Although this in itself does not determine that he has acted in bad faith it points very strongly in that direction, and the UDRP was promulgated for just this sort of circumstance; and
4(b)(iii) he has registered the domain name in order to disrupt the Complainant’s business; and
4(b)(iv) he has attempted to attract, for commercial gain, Internet users to his website and thus created a likelihood of confusion with the Complainant’s famous name and trademark as to the source, sponsorship, affiliation, or endorsement of his website and of products or services on that website. It is a reasonable assumption that the Respondent is benefiting financially from his unauthorised use of a name which is so similar to the Complainant’s famous name and trademark POLAROID;
Having found that the disputed domain name and the Complainant’s name and trademark are confusingly similar, and since it appears that the similarities between the two are designed to capitalise on the very slight typographical differences between them which could lead Internet users to assume that they are affiliated, the Panel has had little difficulty in concluding that the action of the Respondent in registering the disputed domain name was in contravention of paragraph 4(b) of the Policy.
However, it should not be overlooked that paragraph 4(a)(iii) of the Policy requires both registration AND use in bad faith but it is clear from the above, that there has been use in this case.
These proceedings are binding on the Respondent. Nevertheless it failed to present the Panel with any submission, document, or communication whatsoever, despite the fact that it had been duly notified by the Center. In particular, the Respondent has not denied that it registered or is using the domain name in bad faith.
The Panel therefore concludes that the Respondent did indeed register and has used the contested domain name in bad faith.
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 <polariod.com> be transferred to the Complainant.
David H. Tatham
Date: November 26, 2004