Kodak Ltd -v- Robertson [2003] DRS 956 (6 June 2003)

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This Complaint falls to be determined under the Nominet UK Dispute Resolution Service Procedure (“the Procedure”) and the Nominet UK Dispute Resolution Service Policy (“the Policy”). The Complaint entered Nominet’s system on 10th April 2003 and was validated on 17th April 2003. Nominet wrote to the Respondent with an effective date of 22nd April 2003 allowing 15 working days, ie until 14th May 2003, for a Response. No Response having been received and the Complainant having paid the relevant fee, the Complaint was referred to me with an effective date of 2nd June 2003 for a Decision. On that date, I confirmed that I was not aware of any reason why I could not act as Independent Expert in this case nor of any matters which ought to be drawn to the attention of the parties which might appear to call my independence or impartiality into question.

4. Outstanding Formal/Procedural Issues

Having reviewed the file, I am satisfied that Nominet took all appropriate steps under paragraph 2(a) of the Procedure to bring the Complaint to the attention of the Respondent. In particular, Nominet wrote to the Respondent at the postal address provided by him and e-mailed him at the address provided for “Admin Contact”, namely sallyandbrian@hotmail.com, and at postmaster@kodapost.co.uk. In response to the first e-mail Nominet received a reply dated 21st April 2002 stating: “No Mr Robertson known at this address”. The second e-mail was bounced back to Nominet as “host unknown”.

It is the responsibility of the registrant of a domain name to provide Nominet with accurate contact details and to keep such details updated. Nominet’s terms and conditions of registration state, under paragraph 2, “What you must do”:

“2.3. You must inform us promptly of any change in your registered details, and those of your Agent if applicable. It will be your responsibility to maintain and update any details you submit to us and to ensure that your details are up to date, and accurate. In particular, it is your responsibility directly or by your Agent to ensure that we have your full and correct postal address.”

5.2. That the details and information submitted by you to us are true and correct, and that any future additions or alterations to your details and information will be true and correct, and that you will submit them in a timely manner.”

“If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down by the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”

The Complainant is a private limited company registered in England & Wales. The status of the Respondent is unclear.

The Domain Name was registered by the Respondent on 16th October 2000. It does not appear to resolve to any active website.

The Complainant makes the following submissions of fact (among others) which, in the absence of any Response or evidence to the contrary, I accept as proven:

(1) That it is the UK subsidiary of Eastman Kodak Company, which is one of the world’s largest manufacturers of photographic film.

(2) That the Kodak group has over 100 years of international reputation and goodwill connected with the name “Kodak”.

(3) That “Kodapost” is a mail order service which has operated since 1991 and in the UK since 1996. It had over 400,000 UK customers in 2002.

(4) That the Complainant has promoted Kodapost online since 1996 on its website at www.kodak.co.uk.

(5) That the brands “Kodak” and “Kodapost” are famous and that the former has been rated by Interbrand as the fourth best known brand in the world.

(6) That the Complainant is the proprietor of UK trade marks including KODAK in various classes registered on 13th March 1891 and KODAPOST in various classes since 9th May 1994.

6. The Parties’ Contentions

(1) That the Domain Name is identical to the Complainant’s trade mark KODAPOST and similar to its trade mark KODAK. In the latter case, the deletion of the “k”, and the addition of a generic or descriptive suffix such as “post” (or “colour”), do not detract from such similarity nor do they render the Domain Name generic or descriptive.

(2) That the name “Kodapost” can only refer to services available by post from Kodak, and the Domain Name creates the impression that internet users accessing a relevant website are able to find information on such services. The commercial impression is therefore created that the Respondent’s goods or services are sponsored or endorsed by, or affiliated with, the Complainant.

(3) That the Respondent registered the Domain Name as a blocking registration, with the effect that the Complainant, as the legitimate owner of the KODAPOST and KODAK marks, is unable to register it. There is no legitimate purpose to which the Respondent could put the Domain Name.

(4) That in the light of the Respondent’s failure to respond, I should draw the following inferences:

(a) that the domain name is so closely connected with the Complainant that it is difficult to conceive of any genuine purpose for registration on the part of anyone not connected with the Complainant;

(b) that the Respondent is not connected with the Complainant and the Complainant has not consented to the registration of the Domain Name (this seems to me to be an assertion of fact rather than an inference);

(d) that the Respondent has not used the Domain Name (which the Complainant accepts is not of itself conclusive of an Abusive Registration);

(e) that the Respondent has “registered more than one domain name”, including <kodapost.com>, which he registered in October 2000, but which was acquired by the Complainant upon that registration lapsing (again this appears to be an assertion of fact).

(5) That where a Respondent cannot use a domain name without violating the applicable law, the registration is abusive even if the Respondent has done no more than register the name (the Complainant relies on Nokia Corporation –v- Just Phones DRS 058). This is particularly the case where the Complainant’s mark is distinctive (I assume the Complainant means famous) as in the case of KODAK and KODAPOST. Further, such registration constitutes “an illegitimate exploitative threat” (Pickfords Limited –v- Anglo Continental Limited DRS 187).

(6) That the matters set out in (2) to (5) above are sufficient to establish that the Domain Name in the hands of the Respondent is an abusive registration for the purposes of paragraph 3 of the Policy.

(7) That there are no circumstances to which the Respondent could point to show that the Registration is not abusive for the purposes of paragraph 4 of the Policy. In particular:

(a) the Respondent has not been commonly known by the name “Kodak” or “Kodapost” and there are no limited companies with these names;

(c) in view of the fame of the Complainant’s marks, the Respondent cannot make legitimate non-commercial or fair use of the Domain Name;

(d) nor can he make a genuine offering of goods or services under the Domain Name;

(e) there is no possible argument that the Domain Name is generic or descriptive.

“(a) A Respondent must submit to proceedings under the Dispute Resolution Service if a Complainant asserts to [Nominet], according to the Procedure, that:

(i) the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

(ii) the Domain Name, in the hands of the Respondent, is an Abusive Registration.

(b) The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.”

“includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant’s business”.

The term “Abusive Registration” is defined in paragraph 1 of the Policy as referring to a Domain Name which either:

“(i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or

(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

Paragraph 3 of the Policy sets out a non-exhaustive list of factors that may be evidence that a Domain Name is an Abusive Registration. Paragraph 4 sets out a non-exhaustive list of factors that may be evidence that it is not. However, all these factors are merely indicative of, and subject to, the overriding test of an Abusive Registration as set out above.

With regard to paragraph 2(a)(i), the Domain Name (ignoring the suffix “.co.uk”) is identical to the Complainant’s trade mark KODAPOST. Accordingly the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name and the first limb of the test is satisfied.

Under paragraph 3(a) of the Policy, the factors which may be evidence that a registration is an Abusive Registration include:

“(i) Circumstances indicating that the Respondent has registered or otherwise acquired the domain name…

B as a blocking registration against a name or mark in which the Complainant has Rights”.

In this case, there is no evidence of any use by the Complainant of the Domain Name and there is no allegation that the Respondent has sought to sell it to the Complainant for a sum in excess of its documented out-of-pocket costs. It is accordingly a purely “passive holding”.

Nevertheless, I am of the view that the Respondent can have had no legitimate purpose in registering the name. Bearing in mind the observations of the Court of Appeal in British Telecommunication plc and Others –v- One in a Million Limited and Others, [1998] 4 All ER 476, I find that:

(1) the trade name “Kodapost” is well-known brand name in use by the Complainant in the course of its business and that it has substantial goodwill attaching to that name;

(2) there is no evidence that, so far as the general public is concerned, the name “Kodapost” denotes any entity other than the Complainant; and

(3) although the Domain Name is (apparently) unused, any realistic use of it by the Respondent would constitute passing off and/or trade mark infringement. The Domain Name is therefore an “instrument of fraud” in the hands of the Respondent.

With regard to the Complainant’s further submissions, in the absence of any active website or other use of the Domain Name, I do not accept that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant (paragraph 3(a)(ii) of the Policy). Nor do I accept that the Complainant’s evidence with regard to the domain name <kodapost.com> is sufficient to establish that the Respondent is engaged in a pattern of making Abusive Registrations (paragraph 3(a)(iii) of the Policy).

In the light, however, of my finding that the registration is a “blocking registration”, I conclude that the Domain Name was registered and/or has been used by the Respondent in a manner which took unfair advantage of, or was unfairly detrimental to, the Complainant’s rights. The Domain Name is therefore an Abusive Registration in the hands of the Respondent. The second limb of the test, as set out in paragraph 2(a)(ii) of the Policy, is satisfied accordingly.

The Complainant has established on the balance of probabilities that it has Rights in a name or mark that is identical or similar to the Domain Name. It has also established on the balance of probabilities that the Domain Name, in the hands of the Respondent, is an Abusive Registration. Accordingly, the Complaint succeeds and I direct that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Kodak Ltd -v- Robertson [2003] DRS 956 (6 June 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/956.html Cite as: [2003] DRS 956