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Polaroid Corporation v. Jay Strommen [2005] GENDND 1921 (22 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Polaroid Corporation v. Jay Strommen

Case No. D2005-1005

1. The Parties

1.1 The Complainant is Polaroid Corporation of Waltham, Massachusetts, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

1.2 The Respondent is Jay Strommen, of Evanston, Illinois, United States of America.

2. The Domain Name and Registrar

2.1 The disputed domain name <polaroidporn.com> is registered with In2net Network Inc.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2005. On September 22, 2005, the Center transmitted by email to In2net Network Inc. its first of seven requests for registrar verification in connection with the domain name at issue. On October 5 and 7, 2005, In2net Network Inc. transmitted by email to the Center its verification response. 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”).

3.2 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 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2005.

3.3 The Center appointed Mr. Jay Simon as the Sole Panelist in this matter on November 10, 2005. 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

4.1 Complainant developed the instant photography business and its cameras, film and consumer electronics business are well known around the world. Complainant advertises extensively and its coined, trademark POLAROID has become a famous mark, instantly recognizable by the general public.

4.2 Complainant has registered its POLAROID mark with the United States Patent and Trademark Office and has registered the POLAROID mark in many other countries. Examples of Complainant’s many U.S. registrations are shown below:

Mark Reg. No. Date Goods/Services

POLAROID 2,445,280 April 17, 2001 compact discs

POLAROID 2,374,526 May 16, 2000 photographic cameras, etc.

POLAROID 1,497,361 July 26, 1988 optical surface cleaner

POLAROID 423,776 Sept. 10, 1946 photographic fixing baths, etc.

POLAROID 540,179 March 27, 1951 photographic cameras

4.3 Complainant’s earliest registration of its POLAROID mark with the United States Patent and Trademark Office is December 15, 1942. In 1988, Complainant registered the domain name <polaroid.com>.

4.4 Respondent registered the disputed domain name on August 28, 2004. The disputed domain name resolves to a website welcoming users to the future home of the disputed domain name. In essence, Respondent has made no use, i.e., it passively holds, the disputed domain name.

4.5 Respondent has not responded to the Complaint and was notified of its default by the Center.

5. The Parties’ Contentions

A. Complainant

5.1 Complainant contends that the disputed domain name is virtually identical and confusingly similar to Complainant’s mark in that it contains the whole of Complainant’s mark and adds “porn”, the addition being a generic reference and short form for pornographic material.

5.2 Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent is not licensed or otherwise authorized to use Complainant’s mark.

5.3 Complainant further contends that Respondent has not been referred to or commonly known by the disputed domain name, and because Respondent is making no use of the website to which the name resolves, it cannot be making any bona fide offer of goods or services.

5.4 Complainant further contends that Respondent is not making any legitimate or non-commercial or fair use of the disputed domain name.

5.5 Complainant further contends that by virtue of the fame of Complainant’s mark, Respondent registered the disputed domain name to create an impression of an association with Complainant.

5.6 Complainant contends that Respondent has registered and used the disputed domain in bad faith, and Complainant contends that it was inconceivable that the disputed domain name was innocently registered without knowledge of Complainant’s mark. Complainant also contends that its federal registrations in the U.S. act as constructive notice of its marks.

5.7 Complainant further contends that Respondent’s passive holding of the disputed domain constitutes evidence of bad faith, and that an undetermined purpose for the registration does not cure the bad faith aspect of the registration and use.

5.8 Complainant further contends that any use of the website to which the disputed domain name resolves, will be for pornographic material and would undoubtedly tarnish Complainant’s well-known mark.

5.9 Respondent requests that the disputed domain name be transferred to Complainant.

B. Respondent

5.10 Respondent has failed to respond to the Complaint and has not otherwise actively participated in these proceedings.

6. Discussion and Findings

6.1 The Policy as affected by the Rules and the Supplemental Rules provides specified remedies to trademark rights holders against registrants of domain names where the rights holder (Complainant) proves each of the following elements:

(a) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(b) the registrant (Respondent) has no rights or legitimate interests in respect of the domain name; and

(c) the domain name has been registered and is being used in bad faith.

6.2 Complainant has the burden of proof, by a preponderance of the evidence, respecting each element of paragraph 6.1.

6.3 Respondent, having failed to respond in these proceedings, is in default, and in accordance with paragraphs 14(b) of the Rules, “the Panel shall draw such inferences… as it considers appropriate”.

A. Identical or Confusingly Similar (Paragraph 4(a)(i) of the Policy)

6.4 The only difference between Complainant’s well known mark and the disputed domain name is the addition of “porn” to the POLAROID mark. The coined, distinctive portion of the mark remains and only the descriptive term “porn” (an abbreviated form of pornographic) is added. Thus, the disputed domain name incorporates the entirety of the mark and the addition of a common descriptive term is insufficient to change the overall impression of the mark. See EAuto, L.L.C. v. Triple S Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Six Continents Hotel, Inc. v. credo NIC.com/DOMAIN FOR SALE, WIPO Case No. D2004-0987.

This Panel accepts the objective test for determining whether a disputed domain name is confusingly similar to a mark in which Complainant has rights and therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s POLAROID mark(s). Further, too many decisions have found that the “.com” suffix is insubstantial and does not preclude a finding of confusing similarity and there is no longer any need to cite precedent in this regard.

B. Lack of Rights or Legitimate Interests (Paragraph 4(a)(ii) of the Policy)

6.5 Complainant has asserted that Respondent is neither licensed nor authorized to use Complainant’s mark, that Respondent is making no use of the website to which the disputed domain name resolves, and that Respondent has not been commonly known by the disputed domain name. Based on these assertions, Complainant’s early registration of its own domain name, and the evidence of non-use of the website, Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

6.6 Consequently, and though the burden of proof rests with Complainant, the burden of going forward with the evidence now shifts to Respondent. Indeed, it is Respondent who is uniquely in the position of having evidence of its rights or legitimate interests in the disputed domain name, provided such evidence exists. Respondent has elected not to respond, and this Panel may then treat Complainant’s assertions as true and its evidence as uncontested.

6.7 The mere registration of a domain name does not establish rights or legitimate interests in that name. There must be a fair or non-commercial use or a bona fide offering of goods under the domain name to establish rights or legitimate interests. No such use exists here. Rather, it appears to this Panel that the disputed domain name was registered for the purpose of trading off Complainant’s well-known and famous mark. This Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registration and Use in Bad Faith (Paragraph 4(a)(iii) of the Policy)

6.8 Paragraph 4(b) of the Policy lists four, non-exclusive methods for showing bad faith registration and use of a disputed domain name. The renown of Complainant’s mark is a factor in determining bad faith registration, and it is inconceivable to the Panel that Respondent was not aware of Complainant’s mark prior to the registration of the disputed domain name. Rather, and to this Panel, it appears that Respondent registered the disputed domain name to take advantage of Complainant’s mark for the purpose of attracting Internet users to Respondent’s website in the hope of seeing pornographic pictures. Thus, this Panel finds that the disputed domain name was registered in bad faith. See Advance Magazine Publishers, Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615.

6.9 The more difficult question here is whether Respondent, having made essentially no use of the disputed domain name (the website notes that it is reserved for future use) other than to redirect Internet users to other sites for creating websites, is using the domain name in bad faith. Also, there is no evidence as to whether, when or for what purpose Respondent will use the disputed domain name.

6.10 Looking at the website and accepting what it says, that it is the future home of the disputed domain name and nothing more raises the issue of whether passive holding can be considered a bad faith use. This issue was carefully discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where the Panel found that the features of paragraph 4(b) of the Policy are not exclusive and that the circumstances of each case must also be considered. In doing so, the Panel further found that in appropriate circumstances bad faith use need not involve positive action and that inaction was included in the concept of bad faith use. See, also, Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, above, for a discussion of passive holding and its relations to bad faith use.

6.11 The essence of whether passive holding can amount to bad faith use comes down to the following factors:

(i) Complainant’s trademark has a strong reputation and is widely known through substantial use at home and abroad;

(ii) Respondent registered the domain name in August 2004 and seems to have done nothing with the website to which the name resolves;

(iii) Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name; and

(iv) Respondent did not reply to Complainant’s contentions.

The Telstra case and the Advance case list a fifth factor not present in these proceedings, i.e., that Respondent did not reply to Complainant’s communications before the proceedings. There were no communications from Complainant to Respondent prior to these proceedings. Nevertheless, in these circumstances it would appear that such communication would have been futile on Complainant’s part, the important issue being Respondent’s failure to participate in these proceedings. Thus, on the basis of the circumstances in this case the listed factors are satisfied by Complainant and bad faith use of the disputed domain name by Respondent is found by the Panel.

6.12 If the Panel assumes that the web page with its links to website creation sites is a use of the disputed domain, then the Panel finds that paragraph 4(b)(iv) has been satisfied in that Respondent is using a domain name confusingly similar to Complainant’s famous mark to attract Internet users to a site that is neither endorsed nor sponsored by Complainant, and Complainant is neither affiliated with Respondent nor the source of Respondent’s web page. In the absence of evidence to the contrary, this Panel may draw the conclusion that Respondent is profiting from the links to website creators that Internet users may use. Further, it is difficult for this Panel to imagine any reasonable use of this particular domain name, especially given the renown of Complainant’s mark, that would not tarnish Complainant’s rights in the its mark.

7. Decision

7.1 For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, this Panel orders that the domain name <polaroidporn.com> be transferred to Complainant.

Jay Simon
Sole Panelist

Dated: November 22, 2005