Kohler Co. v. Thomas Curley
Claim Number: FA0701000890812
Complainant is Kohler Co. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kohlerbaths.com>, registered with Schlund+Partner Ag.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 14, 2007 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@kohlerbaths.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kohlerbaths.com> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlerbaths.com> domain name.
3. Respondent registered and used the <kohlerbaths.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., is a worldwide leader that produces and markets, inter alia, engines, generators, plumbing, and furniture. In connection with the provision of these products and services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the KOHLER mark (Reg. No. 167,671 issued May 8, 1923).
Respondent registered the <kohlerbaths.com>
domain name
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 asserts rights in the KOHLER mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s timely registration and extensive use
of the mark for over eighty years is sufficient to establish rights in the mark
pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Complainant maintains that the disputed domain name is confusingly similar to its protected mark. The disputed domain name contains Complainant’s mark in its entirety and adds the descriptive term “baths,” which is an obvious allusion to Complainant’s business. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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 Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to set forth concrete evidence showing that it has rights or legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Respondent’s disputed domain name resolves to a website featuring links to competing websites. Presumably, Respondent receives referral fees for each misdirected Internet user that passes through its website. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial use pursuant Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
A review of Respondent’s WHOIS information indicates that
the owner of the <kohlerbaths.com>
domain name is “Oneandone Private Registration.” The Panel finds that, absent evidence to the
contrary, Respondent is not commonly known by the disputed domain name pursuant
to Policy ¶ 4(c)(ii).
See Medline, Inc. v. Domain Active Pty. Ltd.,
FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical
nature of the [<wwwmedline.com>] domain name and its similarity to
Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes
that Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain name resolves to a website featuring links to websites that compete with Complainant’s business. Respondent’s registration of the disputed domain name is likely to create confusion among unsuspecting Internet users expecting to view content related to Complainant’s business. Respondent presumably receives “click-through fees” for each misdirected Internet user. The Panel finds that such use suggests registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <kohlerbaths.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 5, 2007
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