The Complainant is The Eastman Kodak Company, United States of America (“United States”), represented by Sipara, United Kingdom.
The Respondent is Maxim Filippov, Norway.
2. The Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2021. On November 19, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 23, 2021, the Registry 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 November 24, 2021 providing the registrant and contact information disclosed by the Registry, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was January 7, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2022.
The Center appointed Peter Burgstaller as the sole panelist in this matter on January 17, 2022. 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 ADR Rules, Paragraph B(5).
4. Factual BackgroundThe Complainant is a leading global technology company focused on photography, cameras, print, and advanced materials and chemicals (Annex 4 to the Complaint); it is the owner of the trademark KODAK, registered in many jurisdictions around the world, including:
- European Union (or “EU”) Registration No 28449, registered February 4, 1998;
- European Union Registration No 28456, registered February 4, 1998;
- European Union Registration No 1245726, registered December 25, 2014;
- European Union Registration No 1184780, registered November 5, 2013;
- European Union Registration No 1332046, registered July 12, 2016 (Annex 5 to the Complaint).
The disputed domain name was registered on October 5, 2021 (Annex 1 to the Complaint).
The disputed domain name redirects Internet users to a variety of sexually explicit dating and pornographic websites (Annex 9 to the Complaint).
5. Parties’ Contentions A. ComplainantThe Complainant’s KODAK mark is a household name in the EU and in the rest of the world, associated with its long history in the field of photography. The Complainant has evolved into being a global technology company focused on print and advanced materials and chemicals. It provides industry-leading hardware, software, consumables and services primarily to customers in commercial print, packaging, publishing, manufacturing, and entertainment.
The Complainant is the owner of several EU registered trademarks from 1998 onwards which consist of, or contain the KODAK mark. The registrations cover a wide range of consumer electronic products generally in class 9 of the Nice International Classification system, but also associated goods and services in other classes; it specifically covers also batteries, power banks, namely, battery chargers, and battery packs amongst other goods.
The prefix “pilas” in the disputed domain name means “batteries” in Spanish. The Complainant sells a range of batteries under the KODAK trademark; an authorized distributor of the Complainant operates primarily in Spain via the website hosted at
The disputed domain name creates an inaccurate perception and understanding that whatever goods or services are provided via a website hosted at the disputed domain name they will have a connection with the well-known trademark KODAK. This likelihood is increased by the prior existence of the authorized use of the domain name
The disputed domain name incorporates the entirety of the KODAK mark; it only adds the prefix “pilas”. Hence, the disputed domain name is identical or at least confusingly similar to the KODAK registered trademark of the Complainant.
The Complainant has not authorized the Respondent to use its valuable and distinctive KODAK mark or any sign that is identical with or confusingly similar to it. There is also no evidence that the Respondent uses the disputed domain name for a bona fide offering of goods or services, that the Respondent is commonly known by the disputed domain name or is using the disputed domain name for a legitimate non-commercial or fair use. Rather, the disputed domain name redirects or resolves automatically to a variety of sexually explicit dating and pornographic websites.
Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no feasible situation or circumstance in which the disputed domain name could be legitimately used by the Respondent without infringing the Complainant’s famous KODAK mark. Moreover, because of the fame and distinctiveness of the Complainant’s mark the Respondent must have been aware of the KODAK mark prior to registration of the disputed domain name, and was aware of the Complainant’s rights in that trademark. The purpose of the registration of the disputed domain name is to attract Internet users to the pornographic websites being promoted via the disputed domain name, by misleading the users into believing that they will arrive at the Complainant’s website, or at least to a site connected in some way with the Complainant. This constitutes bad faith on the part of the Respondent.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsIn order to succeed in its Complaint, the Complainant is required under Paragraph B(11)(d)(1) of the ADR Rules to demonstrate the following:
(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a Member State and/or European Union law; and either
(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) that the disputed domain name has been registered or is being used in bad faith.
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark KODAK under European Union law.
The disputed domain name is confusingly similar to the Complainant’s distinctive registered trademark KODAK as well as its business identifier/name since it entirely contains this mark and only adds the term “pilas”.
It has long been established in decisions under the ADR Rules that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) will not prevent a finding of confusing similarity under the first element of the ADR Rules.
Moreover, under the ADR Rules the country-code Top-Level Domain (“ccTLD”) “.eu” is typically ignored when assessing the similarity between a trademark and a domain name.
The Panel therefore finds that the Complainant has met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate InterestsWhile the overall burden of proof lies with the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to show evidence of rights or legitimate interests, the complainant is deemed to have satisfied the second element.
Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s distinctive and well-known mark in its entirety, cannot be considered fair as these falsely suggest an affiliation with the Complainant that does not exist.
Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied Paragraph B(11)(d)(1)(ii) of the ADR Rules.
C. Registered or Used in Bad FaithUnder the ADR Rules there is no need for the Complainant to prove bad faith under Paragraph B(11)(d)(1)(iii), if the Respondent lacks rights or legitimate interests in the disputed domain name.
However, the Panel would like to point out, that in the present case the disputed domain name entirely contains the well-known and distinctive trademark KODAK, which in itself constitutes a strong presumption of bad faith.
The Complainant moreover has rights in the well-known and highly distinctive registered trademark KODAK, which is registered and used in many jurisdictions, long before the registration of the disputed domain name. It is therefore inconceivable for this Panel that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith.
Finally, the Panel wants to put emphasis on the following:
- the Complainant’s trademark KODAK is highly distinctive and is well known globally;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name redirects or resolves automatically to a variety of sexually explicit dating and pornographic websites;
- the disputed domain name incorporates the Complainant’s trademark in its entirety, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); and
- there is no conceivable plausible reason for good faith use with regard to the disputed domain name.
Taking all these facts and evidence into consideration this Panel also finds that the disputed domain name has been registered and is being used in bad faith under Paragraph B(11)(d)(1)(iii) of the ADR Rules
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
Peter Burgstaller
Sole Panelist
Date: February 1, 2022