Kohler Co. v. LuoDongXi / LiChaoAn
Claim Number: FA1607001685500
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is LuoDongXi / LiChaoAn (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <robern-germany.com>, registered with Todaynic.com, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2016; the Forum received payment on July 27, 2016.
On August 2, 2016, Todaynic.com, Inc. confirmed by e-mail to the Forum that the <robern-germany.com> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, Inc. 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 August 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@robern-germany.com. Also on August 2, 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 August 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant has registered the ROBERN trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,105,339, registered Oct. 14, 1997). The mark is used in connection with the sale of bathroom cabinets and decorative wall mirrors. The <robern-germany.com> domain name is confusingly similar to its ROBERN trademark because the domain name contains the entire mark and makes only minor alterations, such as adding a hyphen, the term “germany,” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Furthermore, the domain name resolves to a webpage wherein Respondent is selling competing services, and therefore is not using the domain name in connection with a bona fide offering or a legitimate noncommercial or fair use.
3. Respondent has engaged in bad faith registration and use. By using the domain name to resolve to a webpage displaying advertisements for competing services, Respondent has shown bad faith under Policy ¶¶ 4(b)(iii) and (iv).
B. Respondent’s Contentions
1. Respondent failed to submit a response in this proceeding.
1. Respondent’s <robern-germany.com> domain name is confusingly similar to Complainant’s ROBERN mark.
2. Respondent does not have any rights or legitimate interests in the <robern-germany.com> domain name.
3. Respondent registered and used the <robern-germany.com> 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 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 has registered the ROBERN trademark with the USPTO (Reg. No. 2,105,339, registered Oct. 14, 1997). The mark is used in connection with the sale of bathroom cabinets and decorative wall mirrors. The Panel finds that registration with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant argues that the <robern-germany.com> domain name is confusingly similar to its ROBERN trademark. Complainant notes that the domain name contains the entire mark and makes only minor alterations, such as adding a hyphen, the term “germany,” and the gTLD “.com.” As a general rule, the Panel disregards the addition of the hyphen and “.com,” as neither are capable of distinguishing a domain name from the mark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Further, the addition of geographic terms to a domain name has been found to result in a confusing similarity. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Thus, the Panel finds that the <robern-germany.com> domain name is confusingly similar to its ROBERN trademark.
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 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); 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 asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the ROBERN mark in domain names. The Panel notes that “LuoDongXi” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant contends that the domain name resolves to a webpage that advertises competing services. The Panel notes Complainant’s attached Exhibit 5, which purports to show the aforementioned resolving webpage. Prior panels have declined to grant respondents rights or legitimate interests when presented with the same or even similar scenarios. See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel agrees with Complainant, and they too decline to grant Respondent rights or legitimate interests.
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant alleges that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Complainant asserts that its business is being disrupted because the domain name resolves to a webpage displaying advertisements for competing services. The Panel again notes Complainant’s Exhibit 5, which purports to show the aforementioned resolving webpage. Prior panels have found bad faith under Policy ¶ 4(b)(iii) where the domain name was used to market or sell competing services. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). The Panel feels that such is the case here, and they too establish bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent has
displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially
profit from a likelihood of confusion. To support this claim, Complainant again
asserts that the domain name resolves to a webpage advertising competing
services. Again, the Panel notes Complainant’s Exhibit 5, which purports
to show the aforementioned resolving webpage. Prior panels have found bad faith
under Policy ¶ 4(b)(iv) where the domain name was used to market or sell
competing services. See ShipCarsNow, Inc. v. Wet Web Design LLC,
FA1501001601260 (Forum Feb. 26,
2015) (“Respondent’s use of the domain name to sell competing services shows
that Respondent is attempting to commercially benefit from a likelihood of
confusion. Therefore the Panel finds that a likelihood of confusion exists,
that Respondent is attempting to commercially benefit from Complainant’s mark,
and that Complainant has rights that predate any rights of the Respondent, all
of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Thus, the Panel
finds that such is the case here, and they too establish bad faith under Policy
¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <robern-germany.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 9, 2016
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