Generic Top Level Domain Name (gTLD) Decisions

Complainant is Eastman Kodak Company, Rochester, NY, USA ("Complainant"), represented by James D. Kole of Nixon Peabody LLP. Respondent is Dionne Lamb, Los Angeles, CA, USA ("Respondent").

The domain names at issue are <kodaktheatre.com>, <thekodaktheatre.com>, <kodaktheatre.net>, and <kodaktheatresite.com>, registered with Register.com; and the <kodak-theatre.com>, <kodaktheatre.org>, <kodaktheatrehollywood.com>, domain names, registered with Innerwise, Inc..

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on June 11, 2001; the Forum received a hard copy of the Complaint on June 14, 2001.

On June 12, 2001, Innerwise, Inc. confirmed by e-mail to the Forum that the domain names <kodaktheatre.com>, <thekodaktheatre.com>, <kodaktheatre.net>, and <kodaktheatresite.com> are registered with Innerwise, Inc., and that Respondent is the current registrant of the name. On June 13, 2001, Register.com, confirmed by e-mail to the Forum that the domain names <kodak-theatre.com>, <kodaktheatre.org>, <kodaktheatrehollywood.com> are registered with Register.com, and that the Respondent is the current registrant of the name. Innerwise, Inc. and Register.com have verified that Respondent is bound by the respective registration agreements 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 June 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2001 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@kodaktheatre.com, postmaster@thekodaktheatre.com, postmaster@kodaktheatre.net, postmaster@kodaktheatresite.com, postmaster@kodak-theatre.com, postmaster@kodaktheatre.org, and postmaster@kodaktheatrehollywood.com by e-mail.

A timely response was received and determined to be complete on July 2, 2001.

On July 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

The Complainant requests that the domain names be transferred from Respondent to Complainant.

Complainant is an internationally well-known corporate entity that owns the KODAK and KODAK THEATRE marks. Complainant holds many registrations of its KODAK trade and service marks, including Registrations 195,218; 387,492; 396,694; 396,975; 399,092; 406,762; 692,796; 763,542; 1,320,758; 1,334,148; and 1,341,842. These registrations originated as early as February 17, 1925 and show that Complainant used the KODAK mark in business as early as July 1, 1909. Complainant holds these marks for "photographic prints and enlargements…for monthly magazines, periodicals containing news of photographic goods and products, monthly house organ[s], data books for photographic goods and materials and photographic reference handbook," among many other goods and services.

Complainant also publicized its intent to use the KODAK THEATRE mark in a business venture connected with theatre and entertainment services, including "hosting of musical productions, concerts, comedy, dance, variety shows, holiday specials, and other live and broadcast entertainment events, including the Academy Awards," under the name KODAK THEATRE.

The registration of Complainant’s marks and the announcement of the KODAK THEATRE enterprise all took place prior to Respondent’s registration of the domain names at issue here. Respondent has made no use of the domain names other than to offer them for sale, generally, and to Complainant, publishing notices on the Internet that the domain names were for sale. Respondent said the domain names in issue have an appraised value as high as $1,000,000. but that Respondent offered them to Complainant for $100,000. each to be competitive. On its face, even the reduced price is well in excess of any expenditure that Respondent has shown was incurred in registering, promoting or using the domain names.

On June 8, 2001, Complainant directed a draft of the UDRP Complaint to Respondent and on June 22, 2001, Respondent notified Complainant through its counsel that Respondent intended to profit from Complainant’s failure to register the KODAK THEATRE domains and would sell eight such registrations to Complainant for $100,000. each, or a total of $800,000. Respondent urges that Respondent has protected First Amendment rights to use Complainant’s marks in this manner and that Respondent legitimately seized upon Complainant’s failure to guard its intellectual property. Respondent argues that Complainant abandoned its Kodak web page before Respondent registered it. Respondent also notes: "I have always put Eastman Kodak’s interest ahead of my own. In the event Kodak had decided they wanted the domain names I had purchased, I definitely wanted them to have first choice of regaining ownership of the domain name."

As to the eight domain names that Respondent registered, the registration dates were April 11 or 21, 2001 and May 25 or 26, 2001.

It is clear that Respondent is not generally known by the names KODAK or KODAK THEATRE, that Respondent is not an associate of Complainant and that Respondent has no authority from Complainant to use its trade name, trademarks or service marks KODAK and KODAK THEATRE. It is further clear that Respondent made no bona fide offering of goods or services using the marks other than what Respondent calls the "competitive" offer and that Respondent has no license to make any such offers on Complainant’s behalf. Further, the record shows no assignments by Complainant to Respondent of its registered trademarks.

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 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;

(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.

Complainant has established its long-standing common law and registered rights to the KODAK mark and its common law right to the KODAK THEATRE mark. Complainant contends that the disputed domain names are confusingly similar to the KODAK mark since they incorporate the Complainant’s trademark and service mark in its entirety along with some generic word or words that describe Complainant’s business. Complainant is correct in this contention; the domain names registered by Respondent are identical to and confusingly similar to Complainant’s well-known marks. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

In addition, the record permits the Panel to find that the disputed domain names are confusingly similar to Complainant’s marks for another reason. It is likely that a reasonable Internet user would assume that the domain names in issue are somehow affiliated with Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

Complainant has established that it has legally registered rights as well as common law rights in the KODAK and KODAK THEATRE marks, inasmuch as Complainant has been in business using its KODAK mark in this Country and abroad since shortly after the turn of the last Century and inasmuch as the construction and debut of the Kodak Theatre was a well-publicized event prior to Respondent’s registration of these domain names. (See Complainant’s Exhibit D). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require "that a trademark be registered by a governmental authority for such rights to exist"); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).

The Panel finds that Complainant has common law and registered rights in the KODAK and KODAK THEATRE marks and that the domain names in issue are identical to Complainant’s marks. The addition of the words "the," "Hollywood," "site," "net," "org," and "com" do not change the identical nature of the mark that is contained within a domain name for purposes of finding that a disputed domain name is identical to or confusingly similar to another’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as "net" or "com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). See Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration).

As to each domain name in dispute, one of Complainant’s marks is incorporated in its entirety into the domain name and only a connector, generic word or hyphen separate the words of Complainant’s marks. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that "[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features"). Policy ¶ 4(a)(i).

The Panel, having found that Complainant has common law and registered rights in the KODAK and KODAK THEATRE marks, finds that the domain names in issue are identical to and confusingly similar to Complainant’s well-known KODAK and KODAK THEATRE marks.

Complainant has established its rights to and legitimate interests in the marks that are contained in their entirety in the domain names registered by the Respondent. The record establishes that Respondent made an offer to sell the domain names in issue to the Complainant for a consideration that, on its face, is in excess of any amounts shown by Respondent to be her reasonable costs of registering and developing the domain names. While a mere offer to sell a domain name can constitute a bona fide offering of goods or services, the facts here suggest that more than a mere offer was involved. They suggest that Respondent seized upon what she saw as an opportunity to exploit the intellectual property of another and profit from such exploitation. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Here, Respondent held the domain names in issue passively. Respondent did not develop the domain names and Respondent made no bona fide use of them in a non-commercial area. Respondent contends that she made a fair use of the disputed domain names, before notice of this dispute, by providing the general public with information regarding the construction and development of Complainant’s Kodak Theatre enterprise. Respondent further contends that such public information was a non-commercial use of the disputed domain names. Respondent is incorrect; such convoluted reasoning would be appropriate only in a commerce that applauds opportunistic theft of intellectual property. Respondent held these disputed domain names passively and passive holding of disputed domain names that contain in their entirety the registered and common law marks of another does not convey to Respondent rights or legitimate interests in the disputed domain names. See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where Respondent made no use of the infringing domain names).

Further, it is obvious that Respondent is not known commonly by Complainant’s well-established marks and that Respondent has no otherwise credible excuse for utilizing Complainant’s mark in domain names registered by Respondent. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use). Complainant’s marks were well-established before Respondent registered these domain names and Respondent admits admits to knowing about them but takes the untenable position they were abandoned.

The Panel finds that Respondent has shown no rights to or interests in the marks contained in their entirety in the domain names registered by Respondent. Policy ¶ 4(a)(ii).

Complainant contends that Respondent registered and used the domain names in issue in bad faith since Respondent registered them for the purpose of offering them for sale at a consideration in excess of the reasonable cost of registration and development. It is established that Respondent offered the disputed domain names for sale generally and to Complainant. It is undisputed that Respondent claimed an appraised value for these domain names at $1,000,000. but offered them to Complainant for $100,000. each, or a total of $800,000. Respondent contends that this reduction in price made the offer to sell the domain names "direct competition" and not some bad faith attempt to extort money from Complainant. The Panel finds that under the total facts of this case, Respondent registered and attempted to use the domain names in issue in bad faith. Policy ¶ 4(b)(iii). See also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

Other evidence supports the Panel’s determination that Respondent acted in bad faith. Passive holding of the disputed domain names is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith). The offering of a domain name for a consideration in excess of the amount for registration and reasonable expenses of development is evidence of bad faith. See Wembley Nat’l Stadium Ltd. V. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of Respondent to sell the domain name in issue from the outset and not at a price reflecting only the costs of registering and maintaining the name). Opportunistic registration of the known mark of another is evidence of bad faith. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact "that the Respondent chose to register a well-known mark to which Respondent has no connections or rights. This is bad faith. Registering a name that the registrant knows belongs to someone else and that the registrant knows will confuse Internet users about the source or sponsorship of the domain name is bad faith. See Reuters Ltd. V. Teletrust IPR Ltd., D2000-0471 (WIPO Step. 8, 2000) (finding bad faith where Respondent knew about Complainant’s famous mark when registering the domain name).

Respondent’s contention that the disputed domain names were not registered for the purpose of selling them to Complainant is not a reasonable explanation for registering domain names containing the famous mark of another absent other proof. Respondent violated Policy ¶ 4(b)(i) and acted in bad faith. Policy ¶ 4(a)(iii).

Having found that Complainant met each prong of the burden required of Complainant, the Panel finds that the requested relief should be granted. It is therefore ORDERED that the domain names in issue, <kodaktheatre.com>, <thekodaktheatre.com>, <kodaktheatre.net>, <kodaktheathresite.com>, <kodak-theatre.com>, <kodaktheatre.org>, <kodaktheatrehollywood.com>, be and they hereby are transferred from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 17, 2001.