Kohler Co. v. JianChao Liu / Hefei Kohler Environmental protection technology Co., Ltd.
Claim Number: FA1106001396565
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is JianChao Liu / Hefei Kohler Environmental protection technology Co., Ltd. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usa-kohler.com>, registered with Xin Net Technology Corporation.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2011. The Complaint was submitted in both Chinese and English.
On June 30, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <usa-kohler.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 1, 2011 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 postmaster@usa-kohler.com. Also on July 11, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usa-kohler.com> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <usa-kohler.com> domain name.
3. Respondent registered and used the <usa-kohler.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., markets and sells engines and generators, plumbing products, furniture and accessories, cabinetry, and tile. Complainant does business on every continent except Antarctica. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,352,028 registered December 11, 2007) and the Chinese State Intellectual Property Office (“SIPO”) (Reg. No.14,298 registered December 25, 1990) for the KOHLER mark.
Respondent, JianChao Liu / Hefei Kohler Environmental protection technology Co., Ltd., registered the <usa-kohler.com> domain name on February 22, 2011. The disputed domain name resolves to a commercial website selling related goods under a variation of the famous KOHLER mark.
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. 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.”).
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.
In order to demonstrate its rights in the KOHLER mark, Complainant offers evidence of its ownership of trademark registrations for the KOHLER mark with the USPTO (Reg. No. 3,352,028 registered December 11, 2007) and the SIPO (Reg. No.14,298 registered December 25, 1990). The Panel finds that this proof of trademark registration both in the U.S. and China, the country where Respondent is located, sufficiently establishes Complainant’s rights in the KOHLER mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Because the <usa-kohler.com> domain name adds only the geographic term “usa,” a hyphen, and the generic top-level domain (“gTLD”) “.com” to Complainant’s KOHLER mark, Complainant argues that the disputed domain name is confusingly similar to its mark. Based on Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002), and Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006), where the terms “korea” and “brasil,” respectively, were added, the Panel concludes that the presence of a geographic term does not dispel confusing similarity. The Panel also holds that neither a hyphen nor a gTLD have any effect on preventing confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Accordingly, the Panel determines that Respondent’s <usa-kohler.com> 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).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. 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 Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”). Nevertheless, the Panel will examine the record against the Policy ¶ 4(c) factors to determine whether Respondent has rights or legitimate interests in the disputed domain name.
As Respondent’s use of the KOHLER mark is unauthorized, Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the <usa-kohler.com> domain name as “JianChao Liu / Hefei Kohler Environmental protection technology Co., Ltd.” While the WHOIS information may imply some association between Respondent and the disputed domain name, previous panels have determined that this is not sufficient to establish that a respondent is commonly known by a disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Complainant denies that Respondent has been granted any license or permission to use the KOHLER mark or register domain names containing the mark. With the weight of evidence in support of its finding, the Panel holds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii).
Complainant contends that Respondent uses the <usa-kohler.com> domain name to sell related goods. Although such a use is an offering of goods, it is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, because competing and related goods are being offered for sale misleadingly under Complainant’s mark. As a result, the Panel finds that Respondent has not shown rights and legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that the products offered at Respondent’s <usa-kohler.com> domain name are related and competing products. Complainant asserts that the use of the KOHLER mark in the disputed domain name and the presence of related products on the resolving website are both part of a willful misdirection scheme intended to disrupt Complainant’s business by increasing the potential for profit for competitors. The Panel concludes that these activities reveal bad faith registration and use of the <usa-kohler.com> domain name under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
At the <usa-kohler.com> domain name, Complainant asserts that Respondent maintains a commercial website, designed for Respondent’s profit, selling related goods under the KOHLER mark. As the goods are similar to, and competing with, Complainant’s and the disputed domain name consists in part of Complainant’s mark, Complainant contends that Respondent aims to attract consumers and create the confusing and misleading impression that Respondent and Complainant are somehow affiliated or connected. The Panel determines that Respondent’s scheme to attract, mislead, and confuse all for Respondent’s own commercial gain represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates 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 <usa-kohler.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 4, 2011
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