Kohler Co. v. Kevin Saunders / Seaside Gas Service
Claim Number: FA1608001689837
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Kevin Saunders / Seaside Gas Service (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <capecodkohlergen.com>, <capecodkohlergen.net>, <capecodkohlergenerator.info>, <capecodkohlergenerator.net>, <capecodkohlergenerators.com>, <capecodkohlergenerators.info>, <capecodkohlergenerators.net>, <kohlergeneratorcapecod.info>, <kohlergeneratorcapecod.net>, <kohlergeneratorcapecod.org>, <kohlergeneratorscapecod.info>, <kohlergeneratorscapecod.net>, and <kohlergeneratorscapecod.org>, (‘the Domain Names’) registered with GoDaddy.com, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2016; the Forum received payment on August 19, 2016.
On August 18, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <capecodkohlergen.com>, <capecodkohlergen.net>, <capecodkohlergenerator.info>, <capecodkohlergenerator.net>, <capecodkohlergenerators.com>, <capecodkohlergenerators.info>, <capecodkohlergenerators.net>, <kohlergeneratorcapecod.info>, <kohlergeneratorcapecod.net>, <kohlergeneratorcapecod.org>, <kohlergeneratorscapecod.info>, <kohlergeneratorscapecod.net>, and <kohlergeneratorscapecod.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@capecodkohlergen.com, postmaster@capecodkohlergen.net, postmaster@capecodkohlergenerator.info, postmaster@capecodkohlergenerator.net, postmaster@capecodkohlergenerators.com, postmaster@capecodkohlergenerators.info, postmaster@capecodkohlergenerators.net, postmaster@kohlergeneratorcapecod.info, postmaster@kohlergeneratorcapecod.net, postmaster@kohlergeneratorcapecod.org, postmaster@kohlergeneratorscapecod.info, postmaster@kohlergeneratorscapecod.net, and postmaster@kohlergeneratorscapecod.org. Also on August 23, 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 September 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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, founded in 1873 is a market leader in the power generator industry including pump related products and services and owns the registered mark KOHLER for, inter alia, climate control systems in the United States with first use recorded as 1994.
The Domain Names are confusingly similar to Complainant’s mark as they all contain Complainant’s mark in its entirety as the dominant element.
The Domain Names were registered in 2016 and have been pointed to the services of Respondent, a competitor of Complainant, in a manner likely to confuse Internet users and cause confusion. This is not a bona fide use or non commercial fair use. The use of the Domain Names in the same field of activity as Complainant shows knowledge of Complainant and its business.
Complainant has not given permission to Respondent for it to use Complainant’s mark.
Respondent does not have any trade mark rights in the Domain Names.
The registration of a number of domain names containing Complainant’s mark in full knowledge of Complainant’s rights is bad faith in itself as a pattern of registrations.
Respondent is using the Domain Names to intentionally attract for commercial gain Internet users to Respondent’s web site by creating a likelihood of confusion between Complainant’s mark and Respondent’s web site which is bad faith. Respondent’s use of the Domain Names to advertise Respondent’s services and goods of Complainant’s competitors which compete with and are not authorised by Complainant is bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered mark KOHLER for, inter alia, climate control systems in the United States with its first use recorded as 1994.
Respondent has used the Domain Names to offer Internet users services that compete with Complainant.
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.”).
Identical or Confusingly Similar
Complainant is a longstanding provider of climate control services and is the owner of the KOHLER trademark in the United States with first use in commerce recorded as 1994.
The Domain Names consist of a sign identical to Complainant's registered mark KOHLER plus the generic word ‘generator(s)’ or an abbreviation for the same ‘gen’, indicating a product that Complainant offers, the geographical indication ‘cape cod’ and a gTLD. The addition of the geographical indications, generic words and gTLDs do not serve to distinguish the Domain Names from Complainant's KOHLER mark, especially bearing in mind that Complainant offers generators. The Panel finds that the Domain Names are confusingly similar to a mark in which Complainant has rights for the purpose of the Policy. See General Motors LLC v Domain Admin, privacy protection Inc dba PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s gm-Uzbekistan.com domain name confusingly similar to complainant’s GM mark as the addition of a geographical term is inconsequential to a Policy 4(a)(i) analysis). With regard to the descriptive terms ‘ generator’ and ‘generators’ and its short form ‘gen’ panels have often held that the addition of terms that are descriptive of a complainant’s business does not sufficiently distinguish a domain name from a complainant’s mark. See Gillette Co. V RFK Assocs, FA 492867 (Forum July 28, 2005) (finding that additions of terms which describe the complainant’s business and the gTLD .com were insufficient to distinguish the domain name from the complainant’s mark) See Thom Browne Inc v Huili Zhang , FA 1358629 (Forum Dec. 22, 2010. (finding that the addition of a gTLD has no effect on the Policy 4(a)(i) analysis).
Rights or Legitimate Interests
It is clear from the evidence that Respondent has used the site attached to the Domain Names to promote services in competition with those of Complainant. It is clear from the content of the site that Respondent was aware of the significance of the name "KOHLER " at the time of registration. The usage is not fair as the site does not make it clear that there is no commercial connection with Complainant. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods and services. See Alcon, Inc. v ARanked, FA 1306493 (Forum Mar. 18, 2010)(where the Panel found that the capitalising on the well known marks of complainant by attracting Internet users to its disputed domain names where respondent competes with the complainant is not a bona fide offering of goods or services pursuant to Policy 4 (c)(i) or a non commercial or fair use pursuant to Policy 4 ( c ) (iii).)
Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use Complainant’s name for competing services. Complainant has not granted Respondent any permission to use its mark and Respondent does not appear to be commonly known by the Domain Names. As such, the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Names and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant alleges that Respondent's use of the site is commercial and he is using it to make a profit from services which compete with Complainant in a confusing manner. The content of Respondent’s web site makes it clear that Respondent was aware of Complainant’s rights at the time of registration. It seems clear that the use of the Domain Names for competing services would cause people to associate the websites at the Domain Names with Complainant and its business and services. See Clark Equipment Company v Namase Patel/Mumbai Domains, FA 1406002566288 (Forum July 30, 2014)(where the disputed domain name linked to a competing web site and the Panel determined that Respondent was attempting to mislead consumers and likely profited from the resulting confusion constituting bad faith pursuant to Policy 4 (b)(iv).) Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site.
As such, the Panel believes that Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy and there is no need to consider additional grounds of bad faith put forward by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <capecodkohlergen.com>, <capecodkohlergen.net>, <capecodkohlergenerator.info>, <capecodkohlergenerator.net>, <capecodkohlergenerators.com>, <capecodkohlergenerators.info>, <capecodkohlergenerators.net>, <kohlergeneratorcapecod.info>, <kohlergeneratorcapecod.net>, <kohlergeneratorcapecod.org>, <kohlergeneratorscapecod.info>, <kohlergeneratorscapecod.net>, and <kohlergeneratorscapecod.org> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 8, 2016
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