Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Polaroid Corporation, Cambridge, MA, USA ("Complainant") represented by Lee J. Eulgen, of Katten Muchin Zavis. The Respondent is Damian Macafee, London, UK ("Respondent").

The domain name at issue is <polaroid.net> registered with BulkRegister.

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 a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 13, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.

On February 17, 2001, BulkRegister confirmed by e-mail to the Forum that the domain name <polaroid.net> is registered with BulkRegister and that the Respondent is the current registrant of the name. BulkRegister has verified that Respondent is bound by the BulkRegister 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 February 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 12, 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@polaroid.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 21, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

B. Respondent

Respondent has not disputed the contentions addressed in the Complaint.

Complainant’s POLAROID mark has been registered in the United States Patent and Trademark Office as early as December 15, 1942.

Complainant has expended hundreds of millions of dollars to promote and advertise its cameras, film, and other photography-related goods and services under the POLAROID mark.

On August 9, 2000, over sixty years after Complainant’s adoption and first use of the POLAROID mark, Respondent registered the <polaroid.net> domain name.

On January 8, 2001, Complainant attempted to demand that Respondent cease use of <polaroid.net> and transfer ownership of the domain name to Complainant by sending a letter to Respondent via both email and UPS Express International Delivery. However, because the street address information provided by Respondent to the Registrar is apparently fictitious the hard copy of Complainant’s letter never reached its intended recipient. In addition, no response was ever received to the copy of the letter sent to the Respondent via email.

Respondent uses the domain name in question for the display of banner advertisements for Internet gambling sites and lingerie.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Respondent’s <polaroid.net> domain name is identical to Complainant’s POLAROID mark. See Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the Complainant’s trademark TOSHIBA).

Complainant has shown that Respondent has not used the term "polaroid" in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Complainant has shown that Respondent has not been referred to or commonly known by the term "polaroid" under Policy ¶ 4(c)(ii).

Complainant has shown that Respondent is not making a legitimate noncommercial or fair use of the <polaroid.net> domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue under Policy ¶ 4(c)(iii). Respondent’s use of the <polaroid.net> domain name in conjunction with hosting advertisements for internet gambling sites and lingerie tarnishes Complainant’s mark POLAROID by giving consumers the impression that Complainant, who is in no way connected with these industries, somehow endorses, sponsors, or is otherwise affiliated with Respondent’s web site. See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected web sites does not constitute a legitimate interest in the domain name).

Therefore, Complainant has satisfied its requirements under Policy ¶ 4(a)(ii).

Respondent registered the <polaroid.net> domain name in bad faith with full knowledge of Complainant’s POLAROID mark. Given the fame of Complainant’s mark, coupled with the mark’s inherently arbitrary nature, it is inconceivable that Respondent innocently registered POLAROID.NET without having a design to exploit the domain name’s similarity to Complainant’s famous POLAROID mark and web sites. See Nintendo of America Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding that Respondent, at the time of registration, had notice of Complainant’s famous POKÉMON and PIKACHU trademarks given their extreme popularity).

In addition, the fact that Respondent provided fictitious contact information to the Registrar further demonstrates Respondent’s bad faith. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith).

Therefore, Complainant has satisfied its requirements under Policy ¶ 4(a)(iii).

On the basis of the findings above, it is hereby ordered that the domain name, <polaroid.net>, be duly transferred from Respondent to Complainant.