Kohler Co. v. lirong shi
Claim Number: FA1606001679435
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, United States. Respondent is Lirong Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlerfaucetguys.com>, registered with Xiamen Dianmei Network Technology Co., Ltd.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2016; the Forum received payment on June 15, 2016.
On July 8, 2016, Xiamen Dianmei Network Technology Co., Ltd. confirmed by e-mail to the Forum that the <kohlerfaucetguys.com> domain name is registered with Xiamen Dianmei Network Technology Co., Ltd. and that Respondent is the current registrant of the name. Xiamen Dianmei Network Technology Co., Ltd. has verified that Respondent is bound by the Xiamen Dianmei Network Technology Co., Ltd. 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 June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@kohlerfaucetguys.com. Also on June 21, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 uses the KOHLER mark in connection with its business of providing plumbing products. Complainant registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 577,392, registered July 14, 1953), which establishes rights in the mark. Respondent’s <kohlerfaucetguys.com> domain name is confusingly similar to the KOHLER mark as it fully incorporates the KOHLER mark and the KOHLER mark is the dominant element in the disputed domain name.
Respondent has no rights or legitimate interests in the <kohlerfaucetguys.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant given any license, permission or authorization by which Respondent could use the KOHLER mark. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <kohlerfaucetguys.com> domain name. Rather, the domain resolves to an active website displaying links to commercial websites unrelated to Complainant.
Respondent is using the <kohlerfaucetguys.com> domain name in bad faith. First, Respondent’s use of the domain serves as a disruption of Complainant’s legitimate business purposes. Second, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Lastly, Respondent had actual knowledge of the KOHLER mark and Complainant’s rights therein at the time the disputed domain name was registered because of Respondent’s use of the KOHLER mark in the domain name, and the mark’s fame.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Kohler Co. of Kohler, WI, USA. Complainant is the owner of domestic and international registrations for the mark KOHLER, which it has continuously used since at least as early as 1953, in connection with plumbing products and services, including faucets, fittings, components and supplementary installation. Complainants international registrations include registration for its goods in China.
Respondent is Lirong Shi, of Fujian, China. Respondent’s registrar’s address is also listed as Fujian, China. The Panel notes that the <kohlerfaucetguys.com> domain name was registered on or about January 6, 2016.
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.”).
Complainant uses the KOHLER mark in connection with its business of providing plumbing products. Complainant registered the KOHLER mark with the USPTO (Reg. No. 577,392, registered July 14, 1953), and argues that its demonstration of a trademark registration is sufficient in establishing Policy ¶ 4(a)(i) rights in the KOHLER mark. Prior panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). The Panel here finds that Complainant has established Policy ¶ 4(a)(i) rights in the KOHLER mark.
Complainant argues that Respondent’s <kohlerfaucetguys.com> domain name is confusingly similar to the KOHLER mark as it incorporates the mark in its entirety, and the KOHLER mark is the dominant element in the disputed domain name. The Panel notes that the disputed domain name also adds the terms “faucet” and “guys,” and the generic top-level domain (“gTLD”) “.com.” Previous panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel here finds that Respondent’s <kohlerfaucetguys.com> domain name is confusingly similar to the KOHLER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), then the burden shifts to Respondent to show it does have 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <kohlerfaucetguys.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name nor has Complainant given any permission, license or authorization to Respondent to use the KOHLER mark. The Panel notes the WHOIS information regarding the disputed domain name, identifies “lirong shi” as registrant of record. The Panel notes further that Respondent failed to submit a response in this proceeding. In light of the evidence available the Panel finds that there is no basis to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <kohlerfaucetguys.com> domain name. Rather, Complainant contends that the domain name resolves to an active website displaying hyperlinks to third party websites unrelated to Complainant’s business. Past panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). The Panel here finds that Respondent’s website for <kohlerfaucetguys.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s use of the <kohlerfaucetguys.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because of the inclusion of unrelated hyperlinks to third party websites. Past panels have agreed that a respondent’s use of a confusingly similar domain to promote products and/or services unrelated to a complainant constitutes bad faith disruption under Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site). The Panel here finds that Respondent’s use of its <kohlerfaucetguys.com> domain name supports a conclusion of bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel notes that Internet user confusion may result from Respondent’s use of its domain due to its similarity to Complainant’s mark and therefore constitutes bad faith under Policy ¶ 4(b)(iv). See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlerfaucetguys.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 3, 2016
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