Kohler Co. v. JACOB TANNER / DIGITAL HYVE
Claim Number: FA1604001672644
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is JACOB TANNER / DIGITAL HYVE (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohler-engine-parts.com>, registered with ENOM, INC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 29, 2016; the Forum received payment May 2, 2016.
On May 2, 2016, ENOM, INC. confirmed by e-mail to the Forum that the <kohler-engine-parts.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2016, 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@kohler-engine-parts.com. Also on May 3, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in This Proceeding:
Complainant is a worldwide leader in the power-generator industry and has been producing engines since 1920. Complainant’s rights in the KOHLER mark stem from registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 590,052, registered May 18, 1954). Respondent’s disputed domain <kohler-engine-parts.com> is identical and confusingly similar to the KOHLER mark as the domain fully incorporates the mark and the mark is the dominant element in the domain.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been commonly known by the <kohler-engine-parts.com> domain. Additionally, Respondent’s use of the domain, to operate a health living blog containing articles that include links to commercial websites, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s advertisement of third-party products disrupts and competes with Complainant’s business. Respondent also attempts to confuse and attract internet users through using Complainant’s KOHLER mark to operate an unrelated website, which hosts commercial links. Finally, Respondent’s use of the famous KOHLER mark in the domain gives rise to the inference that Respondent registered the domain with knowledge of the mark.
Respondent’s Allegations in This Proceeding:
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain November 19, 2015.
Respondent has no such rights or legitimate interests in the mark or disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant, Kohler Co., has sold engines and other power-generating products using the KOHLER mark since the 1920’s. Complainant claims that its rights in the KOHLER mark come from registration of the mark with the USPTO (e.g., Reg. No. 590,052, registered May 18, 1954). See Compl., at Attached Annex 3. Registration of a mark with the USPTO demonstrates the registrant’s rights in a mark. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.).
Complainant next contends that Respondent’s disputed domain <kohler-engine-parts.com> is identical and confusingly similar to the KOHLER mark in which Complainant asserts rights. Respondent’s domain appears to include the entire KOHLER mark and append the gTLD “.com,” hyphens, and the generic terms “engine” and “parts.” The presence of the gTLD “.com,” hyphens, and terms related to a complainant’s business do not prevent a finding of confusing similarity. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel finds that Respondent’s disputed domain is confusingly similar to the disputed domain under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has not been commonly known by the disputed domain name. WHOIS information associated with the domain identifies Respondent as “JACOB TANNER,” of the organization “DIGITAL HYVE.” See Compl., at Attached Annex 2. A respondent is not commonly known by a disputed domain name where no WHOIS information or other relevant evidence in the record suggests that to be the case or suggests the contrary. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum August 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel may find that Respondent is not commonly known by the <kohler-engine-parts.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s use of the domain constitutes neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a website that appears to function as a healthy living blog that hosts various articles related to topics such as nutrition and exercise. See Compl., at Attached Annex 4. The articles contain text stating, “You may also want to visit your local Syracuse store for organic vegetables and fruits,” with the words “Syracuse store” hyperlinked to a grocery store in Syracuse, New York. See id. Using another’s mark for the purpose of linking to websites unrelated third-party business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See SimScale GmbH v. Oliver Sharp, FA1401001537384 (Forum Feb. 3, 2014) (holding that the respondent’s “use of the disputed domain name to promote links to unrelated third parties is not protected as 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).”). Based on Respondent’s use this Panel finds that Respondent’s use does not fall within the permitted uses under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant first contends that Respondent’s bad faith is evident from use of the domain to advertise third-party products, which disrupts or competes with Complainant’s business. Respondent’s domain resolves to a website that is used for a healthy living blog, which includes some links to unrelated commercial websites. See Compl., at Attached Annex 4. Panels generally find bad faith under Policy ¶ 4(b)(iii) where a respondent uses a domain for the purpose of hosting of competing commercial links. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Panels have also held that the term “compete” under the Policy should be interpreted expansively. See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”). The Panel finds that Respondent’s use opportunistically takes unauthorized advantage of a name well-known and uses such goodwill as attaches to that name to its own advantage commercially; such conduct competes and disrupts Complainant’s business and supports findings of bad faith under Policy ¶ 4(b)(iii).
Complainant next asserts that Respondent acted in bad faith based on confusing and attracting internet users for commercial gain. As stated previously, Respondent’s domain resolves to a website that uses the KOHLER mark and includes links in articles to commercial businesses or products such as lasik surgery or to a grocery store. See Compl., at Attached Annex 4. Panels have consistently found bad faith on the part of respondent where a website featuring a complainant’s mark is used to host unrelated commercial hyperlinks. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). The Panel similarly finds that Respondent demonstrated bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the KOHLER mark. Complainant argues that the fame of the KOHLER mark and use of the mark in the disputed domain name indicates that Respondent had actual knowledge of Complainant's mark and rights and used it to draw unsuspecting Internet users to its site. The Panel finds that Respondent’s domain name and the use of it shows actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <kohler-engine-parts.com> domain name BE TRANSFERRED from Respondent to Complainant.
.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 14, 2016.
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