Kohler Co. v. Daniel Auer
Claim Number: FA0207000115044
PARTIES
Complainant
is Kohler Co., Kohler, WI
(“Complainant”) represented by Paul D.
McGrady, of Ladas & Parry. Respondent is Daniel Auer, Middletown, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kohlerstore.com>,
registered with Joker.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to the
best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Hon.
Ralph Yachnin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 10, 2002; the Forum received a hard copy of the
Complaint on July 11, 2002.
On
July 12, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <kohlerstore.com> is registered
with Joker.com and that Respondent is the current registrant of the name. Joker.com has verified that Respondent is
bound by the Joker.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@kohlerstore.com by e-mail.
The
National Arbitration Forum received correspondence from Respondent subsequent
to the receipt of the Complaint.
However not one of the items of correspondence, nor all of them
combined, could be deemed to have addressed any of the required issues and be
in conformity with the required rules for submitting a Response. Consequently, having received no formal
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On
August 12, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<kohlerstore.com> domain name is confusingly similar to
Complainant's KOHLER mark.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a formal Response.
FINDINGS
Complainant has registered its KOHLER mark
in numerous countries throughout the world including the United States (Reg.
Nos. 2,382,736; 2,235,466; and 592,927).
Complainant operates 44 manufacturing plants and 26 subsidiaries and
affiliates and dozens of sales offices spread over every continent but
Antarctica.
Complainant has used the KOHLER mark in
commerce since the late 1800’s.
Complainant’s mark is used in relation to a wide variety of goods
including plumbing and power systems products, furniture and accessories, cabinetry
and tile, engines and generators, as well as resort, recreation, and real
estate opportunities. Complainant holds
the registration for and operates a website at <kohler.com>.
Respondent is using the disputed domain
name to display a website that copies graphics from Complainant’s website at
<kohler.com>. Furthermore,
Respondent is using the disputed <kohlerstore.com> domain name to
sell goods that are similar to Complainant’s goods.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of the Complainant's undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
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
(2)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(3)
the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the KOHLER mark through continuous use and registration throughout
the world. Respondent’s <kohlerstore.com>
domain name is confusingly similar to Complainant’s mark because it
incorporates Complainant’s entire mark and merely adds the generic term “store”
to the end of Complainant’s KOHLER mark.
The addition of a generic term to the end of Complainant’s mark is not
enough to create a distinct mark capable of overcoming a claim of confusing
similarity. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also AXA China
Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that
common geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or legitimate
interests in the disputed domain name. See
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore, when Respondent fails to
submit a Response the Panel is permitted to make all inferences in favor of
Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent is using the <kohlerstore.com>
domain name for a website that features goods similar to Complainant’s goods,
the website also copies graphics from Complainant’s own website at <kohler.com>. Furthermore, Respondent’s website lists
Complainant’s customer service number on the website, implying that it is
Respondent’s own customer service number.
Because of the aforementioned circumstances, Respondent is creating a
likelihood of confusion in order to divert Internet users interested in
Complainant to Respondent’s website and therefore, Respondent is not using the
<kohlerstore.com> domain name in relation to a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also N. Coast
Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001) (finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from
Complainant's site to a competing website).
Respondent has submitted no evidence that
it is commonly known as KOHLER STORE or <kohlerstore.com>. Therefore, Respondent has failed to
establish that it has rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent is using a confusingly similar
domain name in order to sell goods that compete with Complainant’s goods. This type of use is considered to be
evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business
from the Complainant to a competitor’s website in violation of Policy
4(b)(iii)).
Based on the fact that Respondent copied
portions of Complainant’s website and customer service number, it can be
inferred that Respondent had actual knowledge of Complainant’s rights in the
KOHLER mark when it registered <kohlerstore.com>. Registration of a domain name that infringes
on Complainant’s mark, despite actual knowledge of Complainant’s rights is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can infer
an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
Respondent is using a confusingly similar
domain name in order to attract Internet users who are interested in
Complainant to Respondent’s website.
The use of a confusingly similar domain name in order to create a
likelihood of confusion for Respondent’s commercial gain is evidence of bad
faith use pursuant to Policy ¶ 4(b)(iv).
See State Fair of Texas v.
Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith
where Respondent registered the domain name <bigtex.net> to infringe on
Complainant’s goodwill and attract Internet users to Respondent’s website); see
also Am. Online, Inc. v. Tencent
Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith
where Respondent registered and used an infringing domain name to attract users
to a website sponsored by Respondent).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly,
it is Ordered that the domain name <kohlerstore.com> be
transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 14, 2002
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