Kohler
Claim Number: FA1008001339819
Complainant is Kohler
Co. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kohlertoilets.org>, registered with eNom.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2010.
On August 10, 2010, eNom.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlertoilets.org> domain name is registered with eNom.com, Inc. and that Respondent is the current registrant of the name. eNom.com, Inc. has verified that Respondent is bound by the eNom.com, Inc. 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 August 17, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of September 7, 2010 by which Respondent could file a Response to
the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin
as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kohlertoilets.org> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlertoilets.org> domain name.
3. Respondent registered and used the <kohlertoilets.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., holds trademark registration with the United States Patent and Trademark Office (“USPTO”) for the KOHLER mark (e.g., Reg. No. 3,352,028 registered December 11, 2007) as well as with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 2,056,473 registered October 18, 1996). Complainant uses the KOHLER mark in connection with, among other products, toilets, toilet bowls, toilet seats, and toilet tanks.
Respondent registered the <kohlertoilets.org> domain name on January 26, 2010. The disputed domain name resolves to a website the features links to third-party websites that compete with Complainant. The resolving website also offers for sale goods that compete with Complainant’s products.
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 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. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v.
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant asserts rights in the KOHLER mark through its numerous registrations of the mark with the USPTO and the UKIPO. The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the KOHLER mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also The Royal Bank of Scot. Group plc v. TRB, FA 622345 (Nat. Arb. Forum Feb. 22, 2006) (“The Panel accepts Complainant’s registration of the THE ROYAL BANK OF SCOTLAND mark with the United Kingdom Patent Office as evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant argues that Respondent’s <kohlertoilets.org> domain name is confusingly similar to its KOHLER mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. Respondent merely attaches the descriptive term “toilets,” which describes some of Complainant’s products, and the generic top-level domain (“gTLD”) “.org.” The Panel finds the addition of a descriptive term and a gTLD do not sufficiently distinguish a domain name from a mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds Respondent’s <kohlertoilets.org> domain name is confusingly similar to Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <kohlertoilets.org> domain name. After this initial showing, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Despite Respondent failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts it has not granted Respondent any license, permission, or authorization to use its KOHLER mark. Furthermore, the WHOIS information does not indicate that Respondent is commonly known by the <kohlertoilets.org> domain name. The Panel finds Complainant assertions and the WHOIS information indicate that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <kohlertoilets.org> domain name to resolve to a website that promotes goods that compete with Complainant’s goods. A screen shot of Respondent’s resolving website shows a site that features hyperlinks with titles such as “Kohler Toilet,” “Home Depot Bath Sale,” and “25% OFF Kohler Toilets.” The Panel presumes Respondent profits from its use through the receipt of pay-per-click fees. In addition, the resolving website offers for sale toilets and other products that compete with Complainant’s products. Therefore, the Panel finds Respondent does not use the <kohlertoilets.org> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the <kohlertoilets.org> domain name to redirect Internet users seeking its products to a website that provides links to third-party competing websites. The resolving website also offers competing products for sale. The Panel finds this use disrupts Complainant’s business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
As previously discussed, Respondent’s disputed domain name is confusingly similar to Complainant’s KOHLER mark. Moreover, Respondent’s resolving website prominently displays Complainant’s mark. Respondent profits from its use of the disputed domain name through the receipt of referral fees and by offering competing products for sale on its website. Consequently, the Panel finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or products on its site. Therefore, the Panel finds this behavior provides additional evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlertoilets.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 23, 2010
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