Kohler Co. v obrien, james
Claim Number: FA1709001751236
Complainant is Kohler Co. ("Complainant"), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is obrien, james ("Respondent"), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohler-inc.com>, registered with Network Solutions, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2017; the Forum received payment on September 28, 2017.
On September 29, 2017, Network Solutions, LLC confirmed by email to the Forum that the <kohler-inc.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 October 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@kohler-inc.com. Also on October 2, 2017, the 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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" 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 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
Complainant is a market leader in the bath fixture industry, with personnel and distribution offices in six continents. Complainant has used the KOHLER mark in connection with its products and services for many years. Its trademark registrations include a U.S. registration for KOHLER issued in 1914 and other registrations in jurisdictions around the world. Complainant claims that its marks have become famous worldwide as a result of extensive use.
Respondent is the registrant of the disputed domain name <kohler-inc.com>. (The domain name was apparently first registered in October 2016. Complainant asserts that Respondent was first listed as the registrant in February 2017, but supports that claim with a printout of a whois record dated January 4, 2017, that lists Respondent as the registrant.)
Complainant states that Respondent has used the disputed domain name for a "doppelganger" website that appears to be identical to Complainant's own website. The domain name currently does not resolve to a website. Complainant states further that Respondent has never been commonly known by the disputed domain name, and that Complainant has not licensed or otherwise authorized Respondent to use its mark. Complainant contends on these grounds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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."
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 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(f), 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 (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.").
The disputed domain name <kohler-inc.com> incorporates Complainant's mark, adding a hyphen, the generic term "inc," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Kohler Co. v. Xi Long Chen, FA 1737910 (Forum Aug. 4, 2017) (finding <kohler‑corporation.com> confusingly similar to KOHLER); Zoetis Inc. & Zoetis Services LLC v. Leach Mayhall / zoetis-inc, FA 1730886 (Forum June 13, 2017) (finding <zoetis-inc.com> confusingly similar to ZOETIS). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainanrt has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark. Respondent does not appear to be making any use of the domain name at present, and the sole apparent prior use has been for an unauthorized copy of Complainant's own website, a use that clearly would not give rise to rights or legitimate interests. See, e.g., NIKE, Inc., & Nike Innovate, C.V. v. Yang Pyung / HISWILL, FA 1730518 (Forum June 27, 2017). Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent has used the disputed domain name for a website nearly identical to Complainant's own site, presumably with the intent to create and exploit confusion with Complainant. Absent any indication to the contrary, the Panel infers that Respondent registered the domain name with this purpose in mind. Such use is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., iHerb, Inc., v. Emma Hong, FA 1553252 (Forum May 7, 2014); Wells Fargo & Co. v. Koki Mihael, FA 605221 (Forum Jan. 16, 2006). Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohler-inc.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 30, 2017
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