Kohler Co. v. n/a c/o Richard Jones
Claim Number: FA0605000708647
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is n/a c/o Richard Jones (“Respondent”), Residence Emeraude Apt 160, Building D 5 Rue Insel, Toulose 31 200, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sterlingbathtubs.com> and <sterlingbathtub.com>, registered with Enom, 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 May 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 17, 2006.
On May 17, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2006 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@sterlingbathtubs.com, and postmaster@sterlingbathtub.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2006, 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sterlingbathtubs.com> and <sterlingbathtub.com> domain names are confusingly similar to Complainant’s STERLING mark.
2. Respondent does not have any rights or legitimate interests in the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names.
3. Respondent registered and used the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., holds trademark registrations for the STERLING mark both internationally and in the United States, including registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 911,464 issued November 25, 1968), which it uses in connection with plumbing related goods and services, including, but not limited to, bathtubs.
Respondent registered the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names on December 19, 2003. Respondent is using the disputed domain names to redirect Internet users to Respondent’s website featuring links to third-party websites offering goods and services in competition with Complainant, as well as unrelated goods and services including dating services, online casinos and travel websites. Presumably, Respondent recieves pay-per-click fees from these third-party websites.
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.
Complainant has established rights to the STERLING mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <sterlingbathtubs.com> and <sterlingbathtub.com> domain names are confusingly similar to Complainant’s STERLING mark because Respondent’s domain names incorporate Complainant’s mark in its entirety, adding only the generic terms “bathtub” and “bathtubs,” which describe Complainant’s products, as well as the generic top-level domain “.com.” The Panel finds that such minor additions to Complainant’s mark do not overcome the confusingly similar appearance of the domian names pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that respondent lacks rights or
legitimate interests in the <sterlingbathtubs.com> and <sterlingbathtub.com>
domain names. Complainant’s
allegations satisfy the requirement that Complainant make a prima facie case
and shifts the burden to Respondent to prove that it does have rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). The panel is free to interpret Respondent’s failure to respond to
the Complaint as evidence that the Respondent does not have rights or
legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means that Respondent has not presented any
circumstances that would promote its rights or legitimate interests in the
subject domain name under Policy ¶ 4(a)(ii).”); see also Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that
once the complainant asserts that the respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide “concrete evidence that it has rights to or legitimate interests in the
domain name at issue”); see also Bank of Am. Corp.
v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”). In light of the Respondent’s failure to
provide a Response, the Panel will examine the available evidence to determine
whether or not the Respondent has rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c).
Respondent is using the <sterlingbathtubs.com> and
<sterlingbathtub.com> domain names to redirect Internet users to
Respondent’s websites which are made up entirely of links to third-party
websites, some offering goods and services in competition with Complainant’s
goods and services and some offering unrelated goods and services, for example
dating services and online casinos.
This Panel finds that Respondent’s use of the disputed domain names does
not amount to a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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).”).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names either individually or for business purposes. Complainant asserts that Respondent has no license, authorization or other permission from Complainant to use the STERLING mark, and the WHOIS information identifies Respondent as “n/a c/o Richard Jones.” Thus, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names, which are confusingly similar to Complainant’s Sterling mark, to redirect Internet users to Respondent’s websites which feature links to competing third-party websites, thus disrupting Complainant’s business. The Panel finds such use to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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)).
Because Respondent’s <sterlingbathtubs.com> and
<sterlingbathtub.com> domain names are confusingly similar to
Complainant’s STERLING mark there is a likelihood that Internet users will
confuse the disputed domain names with Complainant’s mark. Respondent appears to be capitalizing on
this potential confusion by attracting Internet users to its websites, which
falsely appear to be affiliated with Complainant, and then presumably earning
click-through fees when Internet users follow links to third-party websites
offering both goods and services that compete with Complainants goods and
services and unrelated goods and services, including dating services and
gambling websites. The Panel finds that
such use constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Oct. 6, 2003) (“Respondent has attempted to
commercially benefit from the misleading <qwestwirless.com> domain name
by linking the domain name to adult oriented websites, gambling websites, and
websites in competition with Complainant.
Respondent’s attempt to commercially benefit from the misleading domain
name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also
AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sterlingbathtubs.com> and <sterlingbathtub.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 22, 2006
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