Kohler Co. v. Privacy protection service - r01.whoisproxy.ru.
Claim Number: FA1606001681625
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Privacy protection service - r01.whoisproxy.ru. (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sdmo-kohler.com> and <kohler-sdmo.com>, registered with JSC Registrar R01.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2016; the Forum received payment on June 29, 2016.
On June 29, 2016, JSC Registrar R01 confirmed by e-mail to the Forum that the <sdmo-kohler.com> and <kohler-sdmo.com> domain names are registered with JSC Registrar R01 and that Respondent is the current registrant of the names. JSC Registrar R01 has verified that Respondent is bound by the JSC Registrar R01 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 29, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@sdmo-kohler.com, and postmaster@kohler-sdmo.com. Also on June 29, 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 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the KOHLER mark by virtue of its United States Patent and Trademark Office (“USPTO”) registration (Reg. No. 590,052) which bears a registration date of May 18, 1954 as well as by its other relevant registrations worldwide. Complainant also has rights in the SDMO mark by virtue of its USPTO registration (Reg. No. 2,339,925) which was registered on April 11, 2000.
Respondent’s <sdmo-kohler.com> and <kohler-sdmo.com> domain names are confusingly similar to the KOHLER and SDMO marks because they are both incorporated entirely in both disputed domains, separated by hyphenation, with the generic top-level domain (“gTLD”) suffix “.com” added.
Respondent has no rights or legitimate interests in the disputed domain names. No evidence exists that would support Respondent as being commonly known by the disputed domains per Policy ¶ 4(c)(ii). Further, while both domains resolve to pages with no content, no bona fide offering of goods or services has been made, and no legitimate noncommercial or fair use has been presented.
Respondent registered and used the disputed domains in bad faith. No good faith use has been provided by Respondent. Respondent had actual knowledge of Complainant and the KOHLER and SDMO marks when registering and inactively holding the disputed domains. Inactive holding of the domains is also evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the KOHLER and SDMO marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent currently uses the at-issue domain names to address inactive webpages.
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.”).
Further, 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. Both the WHOIS information and the domain name are in English, which supports the conclusion that Respondent is capable of communicating in English. Furthermore, Respondent has not objected to moving forward in English. Therefore, after considering the circumstance of the present case, the Panel decides that this proceeding should be in English. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
The at-issue domain names are each confusingly similar to trademarks in which Complainant has rights.
Complainant establishes its rights in KOHLER and SDMO marks through its registration of such marks with the United States Patent and Trademark Office. See BGK Trademark Holdings, LLC& Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). It is insignificant that Respondent may be located outside of the jurisdiction of the registrar. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <sdmo-kohler.com> and <kohler-sdmo.com> domain names each contain two unique trademarks owned by Complainant separated with a hyphen and concluded with the top-level domain name “.com.” The differences between the Respondent’s domain names and Complainant’s trademarks are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that the Respondent’s domain names are each confusingly similar to Respondent’s trademarks under Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also, Allstate Insurance Company v. Brian McFedries, FA 1601235 (Forum Feb. 25, 2015) (panel stating that “adding the hyphen to the domain name does nothing to distinguish the domain name from the trademark under Policy ¶4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each of the at-issue domain names. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain names.
WHOIS information for the at-issue domain names lists “Privacy protection service - r01.whoisproxy.ru.” as the domain names’ registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the either the <sdmo-kohler.com> or the <kohler-sdmo.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by either at-issue domain name pursuant to 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).
Respondent uses each at-issue domain name to address an inactive webpage. Using the confusingly similar domain names in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each domain name.
Respondent holds both at-issue domain names without making active use of either. Under the circumstance and absent contrary evidence from the Respondent or elsewhere, Respondent’s failure to actively use the confusingly similar domain name constitutes evidence of bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Furthermore, Respondent registered the <sdmo-kohler.com> and <kohler-sdmo.com> domain names knowing that Complainant had trademark rights in the KOHLER and SDMO trademarks. Respondent’s prior knowledge is evident because of the notoriety of Complainant’s trademarks as well as Respondent’s combination of the two of Complainant’s trademarks in each of the at-issue domain names. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names precisely to improperly exploit each domain name’s trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <sdmo-kohler.com> and <kohler-sdmo.com> domain names 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sdmo-kohler.com> and <kohler-sdmo.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 28, 2016
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