Kohler Co. v. jinnan ye / beijing celijie keji youxiangongsi
Claim Number: FA1606001679954
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is jinnan ye / beijing celijie keji youxiangongsi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bjkohler.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 19, 2016, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <bjkohler.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@bjkohler.com. Also on June 27, 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 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sebastian M W Hughes 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 the owner of numerous registrations, including US registration No. 577,392 with a filing date of July 14, 1953; and Chinese registration No. 142,982 with a filing date of December 25, 1980, for the trademark KOHLER (the “Trademark”). Complainant has made extensive use of the Trademark, since 1926, by marketing and selling bathroom fixtures and plumbing products under the Trademark worldwide. Due to the extensive use and registration of the Trademark around the world, the Trademark has become famous and has obtained the status of a notorious mark and therefore enjoys liberal protection under the Paris Convention.
The domain name is confusingly similar to the Trademark. The Trademark is the dominant element in the domain name.
Respondent has no rights or legitimate interests in the domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Respondent is not using the domain names to provide a bona fide offering of goods or services, or a legitimate non-commercial or fair use. The domain name resolves to a website (“Respondent’s Website”) that impersonates Complainant’s Kohler China website at <www.kohler.com.cn>, including by heavily using the Trademark, Complainant’s copyrighted images, and the general look and feel of the Kohler China website.
Respondent has registered and used the disputed domain name in bad faith, in order to intentionally attract, for commercial gain, Internet users to Respondent’s Website, by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website or of a product or service on Respondent’s Website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to transfer of the domain name.
Language of the Proceeding
The language of the registration agreement for the disputed domain names is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.
Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
Complainant has requested that English be the language of the proceeding, and submits that Respondent is fully capable of proceeding in English, and translation of the Complaint would unduly burden the Complainant and unnecessarily delay this proceeding, for the following reasons:
(1) based on a reverse domain name registration lookup it is evident that Respondent has registered multiple domain names which contain terms from the English language; and
(2) Some of the domain names registered by Respondent resolve to content written in the English language.
Respondent has not objected to the use of English as the language of the proceeding and has not filed a Response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
Having considered all the matters above, and pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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:
(3) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(4) Respondent has no rights or legitimate interests in respect of the domain name; and
(5) 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 Panel finds that Complainant has rights in the Trademark acquired through use and registration.
The domain name comprises the Trademark in its entirety, together with the non-distinctive suffix “bj”, a commonly used acronym meaning “Beijing”. The Panel agrees that the dominant element of the domain name is the Trademark, and finds that the use of the suffix “bj” does not serve to distinguish the domain name from the Trademark in any significant way.
The Panel finds that the domain name is confusingly similar to the Trademark.
There is no evidence that Complainant has authorized, licensed, or permitted Respondent to register or use the domain name or to use the Trademark. Complainant has prior rights in the Trademark which precede Respondent’s registration of the domain name by decades. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the domain name, and the burden is thus on Respondent to produce evidence to rebut this presumption.
The Panel finds that Respondent has failed to show, for the purposes of the Policy, that he has acquired any legitimate trademark rights in respect of the domain name or that the domain name has been used in connection with a bona fide offering of goods or services. Neither is Respondent commonly known by the domain name, nor is Respondent making a legitimate non-commercial or fair use of the domain name.
The Trademark is a well-known mark globally in relation to bathroom fixtures and plumbing products, including in China, where Respondent is based.
Respondent’s Website displays images of Complainant’s bathroom and plumbing products, the copyright in which is owned by Complainant, as well as the trademarks of Complainant, under the title “科勒卫浴北京总代理” (meaning “Kohler Bathroom Beijing Distributor”).
Respondent is not the Beijing distributor of Complainant. Furthermore, Respondent’s Website does not contain any disclaimer or any other notice to the public to the effect that Respondent is not authorized, licensed or approved by or affiliated with Complainant.
For the foregoing reasons, the Panel concludes that the domain name has been registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bjkohler.com> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: August 5, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page