WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Eastman Kodak Company v. Registration Private, Domains By Proxy, LLC / Gennaro Guida

Case No. D2019-1251

1. The Parties

The Complainant is Eastman Kodak Company, United States of America (“U.S.”), represented by Barzanò & Zanardo Milano S.p.A., Italy.

The Respondent is Registration Private, Domains By Proxy, LLC, U.S. / Gennaro Guida, Italy.

2. The Domain Name and Registrar

The disputed domain name <kodakstore.com> is registered with Go Australia Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2019. On May 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 6, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2019.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on July 9, 2019. 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 is an American technology company, headquartered in Rochester, U.S., that produces camera-related products with its historic basis on photography. The trademark KODAK has been in use since 1888 and it has been extensively used and promoted since. The Complainant has today about 5,400 employees.

The Complainant provides packaging, functional printing, graphic communications and professional services for businesses all around the world. Its main business segments are currently Print Systems, Enterprise Inkjet Systems, Micro 3D Printing and Packaging, Software and Solutions, and Consumer and Film.

The Complainant has registered numerous domain names worldwide consisting of or comprising the word “Kodak”, among which <kodak.it> (through its Italian division Kodak S.p.A.), <kodak.eu> and <kodak.us>. The Complainant’s principal website regarding the KODAK brand, where its services and products are advertised, is constituted by “www.kodak.com”.

The Complainant is the owner of many trademark registrations consisting of or comprising the word KODAK, among which:

- European Union (“EU”) Trade Mark KODAK no. 000028456 in classes 1, 9, 10, 16, 35, 40, 42, registered on February 4, 1998;

- International trademark KODAK no. 448401A in classes 9, 16, 35, 37, 38, 42, registered on August 3, 1984, designating several countries including Italy.

The disputed domain name <kodakstore.com> was registered on April 7, 2019. At the time the Complainant became aware of this disputed domain name, the WhoIs recorded indicated that the registrant organization was Estensa Srl in Italy. The disputed domain name resolved at that time to a website under construction, with the term “kodakstore” prominently displayed on the landing page.

The Complainant sent a cease and desist letter to Estensa Srl on April 30, 2019. This letter was followed by reminders dated May 13 and May 31, 2019. Estensa Srl did not respond.

At the time of filing of the complaint, the website connected to the disputed domain name had been deactivated and the disputed domain name was redirected to a parking page stating in Italian: “website soon available”. The named registrant was a proxy service, namely Registration Private, Domains By Proxy, LLC.

Upon the filing of the complaint, the Registrar disclosed to the Center that the registrant of the disputed domain name is Gennaro Guida, and that the registrant organization is Estensa Srl, i.e. the company previously named as registrant organization of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that due to its longstanding use (since more than 130 years), and the worldwide promotional and advertising investments, the KODAK trademark is a famous and well-known trademark worldwide.

According to the Complainant, the disputed domain name is confusingly similar to its trademark KODAK as it entirely incorporates such trademark. The addition of the non-distinctive element “store” does not affect confusing similarity. On the contrary, the element “store” is particularly apt to increase the likelihood of confusion because it can indicate a selling point and as such may recall the Complainant’s online sales and official webpages.

The Complainant further contends that the Respondent is not an authorized dealer, agent or distributor of the Complainant, and that the Complainant has not authorized the Respondent to include its mark in the disputed domain name. Nor has the Complainant any knowledge that the Respondent is commonly known by the disputed domain name or has made any demonstrable preparations of use of the disputed domain name in connexion with a bona fide offering of goods or services.

Finally, the Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The Respondent could not ignore the existence of the KODAK trademark given its fanciful and well-known character, and the Respondent’s purpose in registering the disputed domain name was probably to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this mark to its own website. The lack of any disclaimer of non-affiliation on the Respondent’s website corroborates, according to the Complainant, that the Respondent was using the disputed domain name in bad faith. Moreover, the fact that the disputed domain name resolves to a static parking page does not per se prevent a finding of bad faith. The factors developed under the doctrine of passive holding are met in the case at hand.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent 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 interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Complainant owns various trademark registrations for the word mark KODAK.

The disputed domain name <kodakstore.com> reproduces the Complainant’s trademark in its entirety and combines this trademark with the descriptive term “store”.

The trademark KODAK is easily recognizable within the disputed domain name. The mere addition of the descriptive term “store” does not avoid a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.

The disputed domain name is therefore confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy (see Banque Pictet & Cie SA v. Brian Dyson and David Kalan, WIPO Case No. D2016-1114; Lime Wire LLC v. David Da Silva / Contactprivacy.com, WIPO Case No. D2007-1168).

The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Based on the information submitted by the Complainant, the Respondent is not an authorized dealer, agent or distributor of the Complainant, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no indication that the disputed domain name corresponds to the Respondent’s name.

The Respondent does not appear to have used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolved first to a website displaying the term “kodakstore” but, as far as the Panel can see, with no material content, and then to a webpage indicating “soon available”.

The Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Respondent’s silence corroborates the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the well-known and fanciful character of the KODAK trademark, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name.

There is no indication that the Respondent made any use of the disputed domain name, other than connecting it to static webpages. In certain circumstances, UDRP panelists have held that passive holding of a domain name could amount to use in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put (section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Panel finds that the above-mentioned requirements are met in the present case. First, the Panel accepts that the trademark KODAK is well-known. The well-known character of the Complainant's trademark KODAK has been confirmed by previous UDRP panels (see Eastman Kodak Company v. dotqment, WIPO Case No. D2003-0769 and Eastman Kodak Company, Kodak Canada Inc. v. Sebastian Puopolo, WIPO Case No. D2003-0196). In addition, the Respondent has never responded to the Complainant’s cease and desist letter and has not asserted any evidence of actual or contemplated use after the filing of the Complaint. Further, the Respondent adopted a privacy service after receiving the Complainant’s cease and desist letter, which suggests that the Respondent was seeking to conceal its identity. In such circumstances, the Panel finds it difficult to imagine a good faith use to which the disputed domain name may be put. On the contrary, the Panel finds it more likely than not that the Respondent targeted the Complainant’s trademark for the purpose of capitalizing on the reputation of the Complainant’s trademark by diverting Internet users seeking information about this mark to its own website.

For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kodakstore.com> be transferred to the Complainant.

Anne-Virginie La Spada
Sole Panelist
Date: July 23, 2019