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Kodak Limited v. Infovision Solutions Limited and Kodarain Limited [2005] GENDND 227 (23 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kodak Limited v. Infovision Solutions Limited and Kodarain Limited

Case No. D2005-0118

1. The Parties

The Complainant is Kodak Limited, Hertfordshire, United Kingdom, represented by Hammonds, Solicitors, London, United Kingdom.

The Respondents are (i) Infovision Solutions Limited (“Infovision”) and (ii) Kodarain Limited (“Kodarain”), of respectively, London; and Essex, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <kodarain.com> is registered with Tucows Inc, Toronto, Canada.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2005. On February 3, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On February 3,2005 Tucows transmitted by email to the Center its verification response confirming that the Respondent Infovision 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 Respondents of the Complaint, and the proceedings commenced on February 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2005. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 4, 2005.

The Center appointed Anthony R. Connerty as the sole panelist in this matter on March 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

The Complainant relies upon the following matters which are supported by documentation filed with the Complaint, and which matters have not been disputed by the Respondents :

(1) The Complainant is Kodak Limited, a UK registered company which is a subsidiary of Eastman Kodak Company. Kodak Limited’s registered office is in Hertfordshire, United Kingdom.

(2) Eastman Kodak Company is one of the world’s largest manufacturers of photographic films and imaging equipment, supplies and related services, including products and services on the Internet, all offered under the brand name “KODAK”. The Kodak group has over 100 years of international goodwill and reputation in the name KODAK.

(3) The Kodak brand is marketed by means of many registered trade marks, some which are referred to below.

(4) The Respondent Infovision is the registrant of the domain name <kodarain.com>. The domain name was registered on March 23, 2004.

(5) Infovision is a company incorporated in England, with its registered office in London, United Kingdom. Infovision on its website describes its business as a “leading solution provider for internet based applications” and says that it has “…six years of experience in developing and supporting eCommerce sites…”

(6) The Complainant has joined Infovision as Respondent on the basis that it is “ the current registered proprietor of the Domain Name”, and is “the agent of Kodarain Limited in relation to the registration of the Domain Name”.

(7) Kodarain Limited is a company incorporated in England with its registered office in Essex, United Kingdom. The website at “www.kodarain.com” (the “Kodarain Website”) offers photographic services and certain packaged foods for sale on-line under the name “Kodarain”.

(8) Kodarain Limited first came to the attention of the Complainant in relation to an application by Kodarain Limited to the UK Trade Marks Registry for registration of a stylised logo which included the word “Kodarain”. Following publication of the trade mark application the Complainant investigated Kodarain Limited and discovered the Domain Name registration and the Kodarain Website.

(9) The Complainant’s representatives subsequently wrote to Kodarain Limited in relation to the trade mark application, the Domain Name, and the appearance and content of the Kodarain Website. Copies of that correspondence are filed with the Complaint. The correspondence was addressed to Kodarain Limited at its registered office address, which the Complainant has subsequently learned is the address of Kodarain Limited’s accountants, Inger & Co. Kodarain has not formally acknowledged the correspondence.

5. Parties’ Contentions

A. Complainant

The Complainant brings this Complaint against two Respondents:

(i) Infovision on the basis mentioned earlier, namely as the current registered proprietor of the Domain Name and “as agent of Kodarain Limited in relation to the registration of the Domain Name and the content and use which is being made thereof ”; and

(ii) “Kodarain as “the equitable owner of the Domain Name”.

For the reasons given later, the Panel considers that the relevant party for the purposes of this administrative proceeding is the Respondent Infovision.

The Complainant says that the domain name <kodarain.com> is identical or confusingly similar to trademarks such as Kodak in which the Complainant has rights.

Next, the Complainant alleges that “the Respondent has no rights or legitimate interests in respect of the domain name” .

Finally, the Complainant contends that the <kodarain.com> domain name was registered and is being used in bad faith.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Parties

Reference is made in the Complaint – and in this Decision – to the “Respondent” and to the “Respondents”.

However, for the purposes of the remedy sought by the Complainant Kodak Limited, namely for the transfer to the Complainant of the disputed domain name <kodarain.com>, such order for transfer can operate only against the domain name holder or registrant.

The domain name holder/registrant is Infovision Solutions Limited.

Both the ICANN Policy and the ICANN Rules make it clear that the Domain Name Dispute Resolution system operates between the “registrar” and the its customer, “the domain-name holder or registrant”. References in the Policy to “we” and “our” are to the registrar, and references to “you” and “your” are to the domain-name holder or registrant: the Notes to the ICANN Policy.

Paragraph 4(i) of the Policy states that the remedies available are limited to requiring the cancellation of “your domain name” or “transfer of your domain name registration to the complainant” (emphasis added).

Rule 1 of the ICANN Rules defines “Respondent” as the holder of a domain-name registration, and Rule 3(c) provides that a Complaint may relate to more than one domain name, provided that the domain names are “registered by the same-domain name holder” (emphasis added).

There have been circumstances where a Complaint has been made against more than one Respondent, and where the Panel has made an order against those Respondents. For example, where a Panel has held that the Respondents are the same person : National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118:

“The Rules provide that ‘[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder’ (Rules, para. 3(c)). In this case, the Panel is satisfied that the domain name registrants ‘One Sex Entertainment Co.’ and ‘chargergirls.net’ are the same person. As Complainant determined through its Network Solutions’ WHOIS database search, and as the Panel has verified by its own Network Solutions’ WHOIS database search (see Factual Background, supra), the domain name registration information provided under these two names, including the post office box number and Administrative Contact e-mail address, is identical. The Panel considers that it would place an unjustifiable economic burden on the Complainant to require it to initiate two separate administrative proceedings, and that it would be a burden on the administrative process to require duplication of effort, in this context of this case...”

In this case, however, there is only one domain name holder/registrant: Infovision. It is therefore against Infovision that any remedy must be directed.

Nothing seems to turn on the fact that Kodarain Limited has been joined in the Complaint. The Complainant seeks an order for transfer to it of the disputed domain name. If the Complainant is entitled to such order, then that order operates against Infovision. It does not seem to be relevant that the order will not operate against Kodarain, and there seems to be no reason why the joinder of Kodarain should invalidate the proceedings. In line with what the Panel in the National Football League Properties case stated, there would be no justification for requiring Kodak Limited to commence a new administrative process against Infovision alone.

In accordance with paragraph 4(a) of the ICANN Policy, the Complainant must prove that:

(i) The Domain Name 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 interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

In considering those three matters a Panel, by virtue of Rule 14(b) of the ICANN Rules, is entitled to draw such inferences as it considers appropriate from the failure by a Respondent to respond to a Complaint. However, the Complainant must establish each of the three elements required by Paragraph 4(a) of the UDRP: ie, the Complainant must nevertheless prove its case.

A. Identical or Confusingly Similar

The Complainant says that the Kodak group has been active on the Internet for some years and in particular has actively operated the Internet web site “www.kodak.com” since 1995 (the “Kodak Website”) through which it enables Internet users access to information about Kodak and the opportunity to purchase Kodak products and services. The Kodak Website provides different home pages for over 50 countries, including the UK.

KODAPOST and KODAK Picture Center On-line are Kodak brands under which photographic developing services are offered. KODAPOST is a mail order processing service promoted and provided by the Complainant in the Nordic area since 1991, and in the UK since 1996. In 2002, over 400,000 customers in the UK received Kodak film and processing delivered direct to their door with KODAPOST. The Complainant maintains a database of over one million KODAPOST customers. KODAK Picture Center On-line offers on-line photographic processing services, whereby prints from customers’ digital media are delivered to the customers either directly via post or indirectly via a photographic dealer.

The Complainant contends that, as a result of the quality of the Complainant’s products and services - including its photographic developing and ordering services offered under the KODAPOST and KODAK Picture Center On-line marks, the tremendous volume of its customers, and the extensive advertisement and promotion of the KODAK and KODAPOST marks - the KODAK and KODAPOST marks are famous, have acquired substantial goodwill belonging exclusively to the Kodak group, and have come to be and are recognised as indicia of origin exclusively identified with the Complainant.

The Complainant refers to Interbrand’ s publication, “The World’s Greatest Brands”, which ranks KODAK in 4^th place in its list of the world’s top 100 brands. Further, says the Complainant : “numerous courts and UDRP panels have acknowledged and referred to the fame of the KODAK trade mark”. Reference is made to Eastman Kodak Co v. Sebastian Puopolo, WIPO Case No. D2003-0196: “the trade mark KODAK is considered famous”; and to Fleetboston Financial Corp v. n%2fA, WIPO Case No. DBIZ2002-00157: “KODAK has acquired a truly worldwide reputation as a household name”.

The Complaint states that the Kodak brand is marketed by means of many registered trade marks and stylised logos, together with Kodak’s “highly distinctive red and yellow packaging and get up which have all been designed and developed by the Kodak group and in relation to which it owns the exclusive intellectual property rights”.

The Complainant and the Kodak group own a substantial trademark portfolio that includes various trade marks such as KODAK, KODACOLOUR and KODAPOST.

The Complainant submits that the disputed Domain Name is confusingly similar to the Complainant’s KODAK and other KODA pre-fixed trademarks. The only difference between the Respondent’s domain name and the Complainant’s KODAK trade mark:

“ …is the deletion of the letter ‘k’, which creates the Complainant’s ‘KODA’ prefix and the addition of the word ‘rain’. The ‘KODA’ prefix is commonly used by the Complainant to signify KODAK, for example, ‘KODACOLOR’ and ‘KODAPOST’ …together with many others including KODACHROME, KODASNAPS, KODAMATIC and KODARAMA…. The Complainant and/or the Kodak group has registered more than 70 different KODA prefixed trade marks in the UK, and there will be international and community marks in respect of many of these as well. The enormous number and variety of KODA prefixed trademarks developed and owned by the Kodak group reflects the fact that the Complainant and Kodak group have built upon the reputation of the KODAK trademark and thereby created an easily identifiable family of KODAK marks. Accordingly words which start with KODA are very likely to signal Kodak goods or services to consumers. All use by the Complainant of the prefix ‘KODA’ signifies goods or services which are part of the KODAK brand family. Accordingly, the name ‘Kodarain’ is confusingly similar to the KODAK brand and in particular, to its ‘KODA’ pre-fixed trademarks…”

Further, says the Complainant, the choice of a Domain Name confusingly similar to the Kodak registered trade marks must also be viewed within the context of the actual use of the Domain Name on the Kodarain Website by the Respondent: “ The home page of the Kodarain Website features the word ‘KODARAIN’ in large yellow letters against a red background in the center of the screen. The Internet user is then offered a choice between ‘Shopping’ and ‘Photo Studio’ by way of click through links. If the user selects the ‘Photo Studio’ they are taken to a page which features several options running across the top of the page all relating to photographic developing services (Buy Prints, Frames, Prices, Add, Photo etc). The word ‘Kodarain’ appears as a banner heading in large yellow letters on a red strip in the left hand corner of the page.”

The word “Kodarain” and/or “Koda”, argues the Complainant, is “ visually and phonetically similar to KODAK and other KODA-prefixed registered trade marks owned by the Kodak group in relation to photographic goods and services, being the identical goods and services for which Kodak group’s trademarks are registered….”

The Panel is satisfied that the Complainant has produced a mass of evidence to show that there are extensive rights in the various KODA and KODAK marks.

The addition of a word to a well-known mark does not have the effect of distinguishing a disputed domain name from that mark. Further, the .com Gtld is incapable of amounting to a distinguishing feature: the use of the .com is required in any domain name registration.

Here, the addition of the word “rain” and the addition of the suffix .com cannot act to distinguish <kodarain.com> from the Complainant’s well-known marks: see for example the decision of the Panel in Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159. The Sole Panelist in that case stated that: “The domain name <usagshop.com> is clearly confusingly similar to Complainant’s trademark USAG. The domain name incorporates the well-known trademark USAG with the generic word ‘shop’ and the suffix ‘.com’ (which indicates that the domain name is registered in the .com gTLD). It is clear that in this combination Complainant’s trademark stands out. The ability of the word ‘shop’ to distinguish the domain name at issue from Complainant’s trademark is limited. Therefore, the public may think that the domain name is somehow connected to the (owner of the) USAG trademark.”

A similar finding was made by the Panel in Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367: “As numerous courts and prior ICANN Panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.”

In this case, the KODA name stands out in the disputed <kodarain> domain name, and that domain name is not significantly different from the various KODA and KODAK marks.

Indeed, the <kodarain.com> domain name is phonetically similar to the Complainant’s famous KODA and KODAK marks: that fact is itself enough to satisfy the “confusingly similar” requirement of Paragraph 4(a)(i) of the Policy: see for example the decision in Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123. There, the disputed domain name, <mikerosoft.net> “ differs in spelling from the Complainant’s established trademark rights in the MICROSOFT mark; but, as pointed out by Complainant, is phonetically identical. Disputed domain names comprising phonetic variations of trademarks have been held to be ‘confusingly similar’ in many WIPO cases. Complainant has identified a number of these cases in its Complaint, e.g. VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303 (June 28, 2000): Furthermore, it is well established by previous panels that the addition of a generic top-level domain name such as ‘.net’ is not relevant when determining whether a disputed domain is confusingly similar to a protective mark. Universal City Studios, Inc. v. G.A.B. Enterprises., WIPO Case No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level generic domain name does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001).”

The Panel notes the absence of any Response from either of the Respondents.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i).

B. Rights or Legitimate Interests

The next matter which the Complainant must prove is that the Respondents have no rights or legitimate interests in respect of the domain name.

There are two relevant matters here.

First, as stated earlier, the Panel is satisfied that the Complainant has amply proved its rights in relation to the various Kodak marks.

Second, a Respondent may demonstrate its rights to and legitimate interests in a disputed domain name by relying on the non-exhaustive list of circumstances set out in paragraph 4(c) of the Policy: for example, by submitting evidence which satisfies the Panel that the Respondent “has been commonly known by the domain name”.

It is difficult for a Complainant to prove a negative. However, the opportunity provided by Paragraph 4(c) has not been taken by either of the Respondents.

In all the circumstances, the Panel is satisfied that the requirements of paragraph 4(a)(ii) have been met by the Complainant.

C. Registered and Used in Bad Faith

The third and final matter which the Complainant must prove is the bad faith requirement of paragraph 4(a)(iii): registration and use in bad faith.

Each element must be proved, namely both registration in bad faith and use in bad faith.

Paragraph 4(b) of the Policy sets out a non-exclusive list of four circumstances which, if found by the Panel to be present, shall be evidence of such registration and use. Sub-paragraphs (i) to (iii) deal specifically with registration and sub-paragraph (iv) with use.

The Complainant relies particularly upon the provisions of paragraph 4(b)(iv), namely that a Respondent, by using the disputed domain name has “intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Complaint refers to the domain name, Complainant’s trademarks, the look and content of the Kodarain Website and contends that by choosing and registering a domain name “which is confusingly similar to the Complainant’s registered trade marks by which to offer photographic goods and services to the public and by presenting such services in get-up similar to the highly distinctive red and yellow branding and marketing used by the Complainant and the Kodak group and in which the Complainant owns substantial goodwill, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Kodarain Website, by creating a likelihood of confusion with the Registered Trade Marks as to the source, sponsorship, affiliation, or endorsement of the Kodarain Website or location or of a product or service on the Kodarain Website or location…” [the home page of the kodarain.com website as described by the Complainant is set out in Section 6A above].

The Panel is satisfied that the evidence put forward on behalf of the Complainant satisfies the “ attempt to attract for commercial gain” use in paragraph 4(b)(iv).

In those circumstances, and given the failure to serve a Response, it is hardly credible that the actual registration can have been made in good faith : in the absence of any explanation, a user in bad faith is likely to indicate a registration in bad faith – see for example the decision of the sole Panelist in Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437: “In particular, these facts establish that the Respondent has intentionally attempted to attract Internet users to a website associated with the Respondent, by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of that website. This attempt would appear to be for commercial gain. Accordingly, the Respondent’s use of the domain name is a use of the type described by paragraph 4(b)(iv) of the Policy, and accordingly is evidence of the registration and use of the domain name in bad faith. In addition, it is relevant that the Complainant’s registered trademark IKEA is long-established and widely known. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainant’s rights in the trademark can be imputed to the Respondent at the time of its registration of the domain name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain name, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(iv) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain name, there are sufficient grounds to persuade this Administrative Panel that domain name <ikea-korea.com> was registered and is being used by the Respondent in bad faith.”

Finally, it should be mentioned that the Complainant states that “the Kodarain Website does not appear to be complete as none of the services listed are actively offered.”

That fact does not alter the position: even the passive holding of a domain name can amount to bad faith use: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel is satisfied that the Complainant has proved the paragraph 4(a)(iii) requirements of the Policy.

7. Decision

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 <kodarain.com> be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist

Dated: March 23, 2005