Kohler Co. v. Kevin Saunders / Seaside Gas Service
Claim Number: FA1609001692851
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Kevin Saunders / Seaside Gas Service (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 8, 2016; the Forum received payment on September 9, 2016.
On September 8, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@kohlergeneratorcapecod.us, and postmaster@kohlergeneratorscapecod.us. Also on September 12, 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 October 7, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 usTLD 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 usTLD Policy, usTLD 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 Kohler Co. (“Kohler”) owns, among many others, the following trademark registration, which predates the registration of the Offending Domains:
· KOHLER, U.S. Reg. No. 2,766,196, registered September 23, 2003, covering “Operating climate control systems and electrical power generation and distribution systems for others at special events”, “Rental of emergency, backup and supplemental power generators and generating systems, uninterruptible power systems, mobile lighting system, hvac units, and air conditioning units; and electrical power generation for others” and “Planning and monitoring emergency, backup, and supplemental power generating and distribution systems for others.”
The KOHLER Mark represents to the worldwide consuming public the goods and services offered by Complainant. Complainant has made extensive use of the KOHLER Mark by providing various pump products that are marketed and sold throughout the world in connection with numerous services.
The Fame of the KOHLER Mark. Due to the extensive use and registration of the KOHLER family of marks around the world, the KOHLER trademarks have become famous under the laws of the United States and countries around the world. In UDRP proceedings, subject to similar requirements, past panels have found the marks have become famous and that they readily identify Complainant’s goods and services. See, e.g., Kohler Co. v. shuaiwei xu, FA1603001664060 (Forum April 1, 2016) (finding that Respondent registered the domain name <kohlerchocolates.com> in bad faith given the fame of the Kohler mark). Further, the KOHLER Mark has also obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.
Based on a WHOIS Record History, Respondent first registered the Offending Domains on April 6, 2016 – well after Kohler’s use of the KOHLER Mark throughout United States, where the Respondent resides, and around the world.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds. Rule 3(c)(ix).
Complainant and its marks. Kohler, founded in 1873, is a market leader in the power- generator industry, including the manufacture of pump products and services related thereto. Complainant’s ideas, craftsmanship, and technology lead the industry in product design.
The beginnings of Kohler’s power supply business can be traced back to 1920. Within its global distribution network, Complainant’s products are knit together by a superior level of quality over a broad range of price points. Working on the frontier of several industries, including category changing innovative power supply and worksite product designs, Complainant continues to establish new levels of excellence while maintaining its position of industry leadership to best fulfill its mission of improving the quality of life for each person who is touched by its products and services. Complainant’s worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices spread over every continent but Antarctica.
Respondent and its actions. Respondent is a serial cybersquatter who registered the Offending Domains on April 6, 2016. In addition to the Offending Domains, Respondent has also registered the domains 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. Complainant has filed with the Forum, a UDRP complaint for those domains which proceeding is pending.
The Offending Domains were registered well after Complainant began extensive marketing of its services under its marks and well after the registration of its marks in the U.S. and around the world. Complainant has not given Respondent any license, permission or authorization by which Respondent could make any use of any of its marks.
Respondent has used the Offending Domains to redirect users to a website that advertises the services of Seaside Gas Service and products that compete with Complainant’s products, in a manner that is likely to confuse users as to affiliation with the Complainant, and is likely to disrupt Complainant’s business. Specifically, Complaint asks the Panel to note the brands, that are competitive to Complainant.
[a.] The Offending Domains are confusingly similar to the KOHLER Mark. Rule 3(c)(ix)(1); Policy ¶4(a)(i).
The Offending Domains are nearly identical and confusingly similar to Complainant’s marks because each Offending Domain fully incorporates the KOHLER mark, where the KOHLER mark is the dominant element in each Offending Domain, and merely adds the generic or descriptive terms generator and generators, the generic geographical element “cape cod,” and country-code top-level-domain (ccTLD) “us.” The addition of a generic terms and a ccTLD do not make the Offending the Domain any less confusingly similar under Policy ¶4(a)(i). See Pepsico, Inc. v. Richard Leeds d/b/a NeonGecko, Inc., FA0208000117870 (Forum Sep. 27, 2002) (finding respondent’s addition of generic term bottling to domain with complainant’s mark did not create the distinction necessary to overcome the confusing similarity between the disputed domain name and complainant’s mark). See also Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (finding disputed domain <aboutcapitalone.us> confusingly similar to complainant’s CAPITAL ONE mark); MasterCard International, Inc. v. Ole Bangstein / Wavepass AS, FA1208001460915 (Forum Oct. 16, 2012) (finding disputed domain <mastercardgiftcard.us> confusingly similar to complainant’s MASTERCARD mark); American Express Company v. Stephen B. McWilliam, FA0405000268423 (Forum July 6, 2004) (finding disputed domain <americanexpresstravel.us> confusingly similar to complainant’s AMERICAN EXPRESS mark).
[b.] Respondent lacks rights or legitimate interests in the Offending Domains. Rule 3(c)(ix)(2); Policy ¶4(a)(ii).
Respondent lacks rights or legitimate interests in the Offending Domains under Policy ¶4(a)(ii) because Respondent cannot demonstrate rights or legitimate interests under Policy ¶4(c). Respondent has never been commonly known as “kohlergeneratorcapecod.us” or “kohlergeneratorscapecod.us” and it has never used any trademark or service mark similar to the Offending Domains by which it may have come to be known other than the infringing use noted here. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent was not a licensee of complainant, (2) complainant’s prior rights in the domain name preceded respondent’s registration and (3) respondent was not commonly known by the disputed domain name). Further, the WHOIS record identifies Respondent as Kevin Saunders affiliated with the organization Seaside Gas Service in Yarmouth Port, Massachusetts, and the email provided is seasidegas@comcast.net. No WHOIS information evidences any rights or legitimate interests in the Offending Domains. Nor does Respondent’s email address evidence any rights or legitimate interests in the Offending Domains. See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (finding no rights or legitimate interests in the dipusted domain where there was no evidence in the WHOIS record or any other source identifying respondent as being commonly known as <aboutcapitalone.us>); American Express Co. v. Stephen B. McWilliam, FA0405000268423 (Forum July 6, 2004) (finding no rights or legitimate interests in the disputed domain <americanexpresstravel.us> because there was no evidence establishing respondent was either known by the disputed domain or held rights in the disputed domain name). Indeed, the content found at the website to which the Offending Domains resolve identifies the content and services affiliated with the Offending Domains as provided by Seaside Gas Service.
Moreover, Respondent’s use of the Offending Domains does not establish rights or legitimate interests under Policy ¶4(c)(iii), and Respondent’s use of the Offending Domains to take advantage of the well-known KOHLER Mark does not constitute a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶4(c)(iv). Indeed, Respondent uses the Offending Domains to redirect to a website advertising Respondent’s services and the goods and services of Complainant’s competitors. Specifically, the Respondent has used the Offending Domains to promote services, including heating, air conditioning, and generator maintenance, installation, and repair, as well as HVAC services, in a manner that misrepresents to consumers that there may be a relationship between Respondent and Complainant where there is no such relationship. In addition, Respondent prominently advertises Complainant’s competitors on the website.
This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent has used the Offending Domains to market Respondent’s own services and the goods of Complainant’s competitors. Past panels have found that a respondent’s use of a domain name that is confusingly similar to a complainant’s mark to divert Internet users for the respondent’s own commercial gain does not constitute 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)(iv). See Nelnet, Inc. v. Charles Abrams, FA1607001682267 (Forum Aug. 8, 2016) (finding that respondent was not using the domain name <netlnetloan.us> in connection with a bona fide offering of goods and services or a legitimate noncommercial fair use under Policy ¶4(c)(ii) and Policy ¶4(c)(iv) where respondent used the domain name to offer goods and services similar to those offered by complainant); see also State Farm Mutual Automobile Insurance Company v. Domain Management, FA0510000575614 (Forum Nov. 30, 2005) (finding respondent’s use of the domain name <state-farm.us> to redirect users to a website that offers goods or services in competition with Complainant’s business was not a use in connection with a bona fide offering of goods or services nor was is it a legitimate noncommercial or fair use); see also AT&T Corp. v. John Schwarzschild d/b/a Wireless Web and TV, Inc., FA0211000128804 (Forum Dec. 18, 2002) (finding respondent’s use of the domain name <attws.us> to redirect users to a website at a different domain name was not a use in connection with a bona fide offering of goods or services nor was is it a legitimate noncommercial or fair use).
Further, the notoriety of the KOHLER mark and its strong affiliation with Complainant, coupled with the fact that Respondent registered the Offending Domains long after registration of the KOHLER mark, makes it clear that Respondent does not have any rights or interests in a domain name incorporating the term KOHLER. Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the past panels have drawn upon UDRP precedent as applicable in rendering their decisions. See Nelnet, Inc. v. Charles Abrams, FA1607001682267 (Forum Aug. 8, 2016); see also AOL, Inc. v. Hi Techsoft Services, FA1606001681342 (Forum Aug. 5, 2016). Past panels in UDRP proceedings have found a lack of legitimate rights or interest in a domain name where the domain name incorporated a famous mark. See Sony Kabushiki Kaisha a/t/a Sony Corporation v. John Zuccarini d/b/a Rave Club Berlin, FA 0204000109040 (Forum May 23, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating famous SONY marks); Bank of Am. Corp. v. BanofAmerica, FA 0203000105885 (Forum Apr. 12, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating variant of famous BANK OF AMERICA marks); Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing complainant’s distinct and famous NIKE trademark); see also CBS Broad., Inc. v. LA- Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Finally, Complainant has not granted Respondent any license, permission or authorization by which it could own or use any domain name registrations that are confusingly similar to any of Complainant’s marks. See Sony Mobile Communications AB / Sony Corporation v. Abbot S / Abbot, FA1404001553333 (Forum May 11, 2014) (finding no legitimate rights in the <sonymobile.us> domain name, in part, because complainant did not grant respondent a license or permission to use the respondent’s trademarks in any manner).
[c.] The Offending Domains were registered and is being used in bad faith. Rule 3(c)(ix)(3); Policy ¶4(a)(iii).
As the facts set forth above establish, Respondent registered and uses the Offending Domains in bad faith under Policy ¶¶4(a)(iii) and 4(b)(i).
Respondent had actual knowledge of Complainant’s marks, as evidenced by Respondent’s use of the KOHLER Mark in his domain name which advertises Respondent’s services for products of Complainant’s competitors. The mere fact that Respondent has registered multiple domain names which incorporate the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith under UDRP case precedent. See, e.g., Nw. Airlines, Inc., v. Mario Koch, FA 95688 (Forum Oct. 27, 2000) (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Analogous activities by cyber-squatters operating in other industries were considered to rise to the level of “opportunistic bad faith.” See Singapore Airlines Ltd. v. P & P Servicios de Communicacion, D2000-0643 (WIPO Sept. 11, 2000) (holding that “the domain name singaporeairlines.com is so obviously connected with a well-known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber-squatting’”). In addition, Respondent has actual knowledge of Complainant’s marks as evidenced by the use of the KOHLER mark and the content found on Respondent’s website describing services that relate to and are in competition with Complainant’s services and products. See e.g., American Sports Licensing, Inc. v. George Dzaganishvili, FA1208001460816 (Nat. Arb. Form Oct. 22, 2012) (finding respondent had actual knowledge of complainant’s mark where it used the mark in a domain name which resolved to a website advertising coupons related to the complainant).
Additionally, Respondent had at least constructive knowledge of the Complainant’s marks based on Complainant’s registration of its marks in the United States. See Orange Glo Int’l v. Blume, FA0118313 (Forum Oct. 4, 2002) (noting that complainant’s OXYCLEAN mark was on the Principal Register of the USPTO, conferring a status of constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof). Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complainant. See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (“Had respondent done a trademark search at the time respondent registered the domain name at issue, respondent would have received notice of Complainant’s pending application for registration. . . . It is fair to apply United States principles of constructive notice to this situation.”). Had the Respondent done a trademark search, domain name search or simply used an Internet search engine before registering the Offending Domains, Respondent would have seen Complainant’s KOHLER Mark. Additionally, due to Complainant’s degree of global and national fame and notoriety, Respondent could not possibly have registered the disputed domains not in bad faith.
Respondent’s use of the Offending Domains to intentionally attract, for commercial gain, Internet users to Respondent’s website or other online locations, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website, constitutes bad-faith registration and use under Policy ¶4(b)(iii). See e.g., L’Oréal v. Bruce Mole, FA1203001435940 (Forum May 7, 2012) (finding respondent’s use of the confusingly similar domain name <lorealprofessiona.us> to confuse consumers about whether respondent’s site is sponsored by, or somehow associated with, complainant constituted bad faith registration and use); see also Mattel, Inc. v. Guest Guest c/o Guest, FA0704000956280 (Forum May 15, 2007) (finding bad faith registration and use where respondent capitalized on consumer confusion created by using the domain name <barbiegirl.us>). Moreover, Respondent’s use of the Offending Domains to advertise Respondent’s services and the goods of Complainant’s competitors, which compete with and are not authorized by Complainant, constitutes bad-faith registration and use under Policy ¶4(b)(iii). See Nelnet, Inc. v. Charles Abrams, FA1607001682267 (Forum Aug. 8, 2016) (finding respondent registered and used the domain name <nelnetloan.us> in bad faith where respondent used the domain to promote services that compete directly with a complainant’s business); see also Health Republic Insurance Company v. Gustavo Winchester, FA1506001622089 (Forum July 7, 2015) (finding bad faith in use and registration where respondent used the domain name <newyorkhealthrepublic.us> to host links leading to services which competed with complainant’s services and to disrupt complainant’s business).
Finally, that Respondent has registered fifteen domain names containing Complainant’s famous mark is evidence of a pattern of bad faith registration and use, in violation of Policy ¶4(b)(ii) pursuant to UDRP precedent. See e.g., Microsoft Corp. v. Eliran Mishal, FA1101001370342 (Forum Mar. 16, 2011) (finding respondent’s registration of nine domain names containing complainant’s mark to demonstrate a pattern of bad faith registration).
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent sent an email which said:
“Hello, I am now putting this in writing to all parties cc:d in any prior emails.
I spoke with Michelle S. some time ago when this first came about - told her directly that I would turn over all purchased Kohler domains to Kohler. My own lack of knowledge about this issue, and this process, prevented me from putting it in writing. I understand that, as a result, 1689837 has now gone past the response deadline.
I spoke with Deb Lyons at McGrady/ Winston-Straun's office today, to have Paul call me to work this out.
I will relinquish all purchased Kohler domains to Kohler.
Attached is the list and what I paid - which includes some that are not in dispute.
I initially bought these domains because I found them to be available, and was looking into Kohler dealership at that time - which I have since decided not to pursue as it is considerably more difficult than expected (based on my previous experience with Generac).”
Preliminary Issue: Consent to Transfer
Respondent informally consented to the transfer of the <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us> domain names to Complainant. The Panel is under no obligation to acknowledge any informal communications.
After the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account. Therefore, Respondent cannot transfer the disputed domain names while this proceeding is still pending. This Panel prefers to go through the analysis to ensure the integrity of these proceedings. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
This Panel agrees and shall proceed in that fashion.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 various pump products. Complainant registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,766,196, registered Sept. 23, 2003). A registration for a mark with the USPTO (or any other governmental office) is normally sufficient to establish rights in a mark under Policy ¶4(a)(i). 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). Complainant need only prove SOME rights to the mark, not that Complainant’s rights are superior to Respondent’s rights. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶4(a)(i) by reason of its registration of the mark with the USPTO.). Complainant has adequately established its rights in the KOHLER mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us> domain names are confusingly similar to the KOHLER mark because they merely add the generic terms “generator” or “generators,” the geographical term “cape cod” and the ccTLD “.us.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (holding that the <rackspace.xyz> domain name is identical to the complainant’s RACKSPACE mark, because, “the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark.”), and see F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Adding related descriptive words does not prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶4(a)(i) analysis.); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a 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 the geographic term “uzbekistan” is inconsequential to a Policy ¶4(a)(i) analysis); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Respondent’s domains are confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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.”).
Respondent not been authorized by Complainant to register any variant of KOHLER in a domain name. Respondent is not commonly known by the disputed domains, based upon the WHOIS information. There is no obvious relationship between Respondent’s name and the disputed domain names. There is no factual basis to find Respondent is commonly known by the <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us> domain names. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
There is nothing in the available evidence which indicates Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)). The fact Respondent purchased these domain names in anticipation of obtaining a Kohler dealership is not adequate to give Respondent any rights. Therefore, Respondent has failed to prove any rights under Policy ¶4(c).
Complainant claims Respondent is not making a bona fide offering of goods or services via the disputed domain names, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv), respectively. The disputed domain names resolve pages which advertise Respondent’s services and the goods/services of Complainant’s competitors. Such advertisements do not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Under the Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) case, a reseller has a limited right to use the trademarks of others so long as all of certain criteria are met:
• Respondent must actually be offering the goods or services at issue; AND
• Respondent must use the site to sell only the trademarked goods; AND
• The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; AND
• The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Respondent is not a reseller of Complainant’s goods, even though Respondent considered becoming one of Complainant’s dealers. There has not been any bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use under Policy ¶4(c)(ii) and (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has registered or used the disputed domain names in bad faith. Respondent has registered fifteen domains containing Complainant’s mark. However, this does not amount to bad faith under Policy ¶4(b)(ii) because Complainant owns <kohlergenerators.com> (meaning Complainant can … and does … reflect its mark in a domain name).
Complainant claims Respondent’s competing use for commercial gain constitutes bad faith under Policy ¶¶4(b)(iii) and (iv). The resolving web site originally showed a web page with various “Seaside Gas Service” offerings which directly compete with Complainant (it appears eight generator manufacturers are listed at the foot of Respondent’s web page). The fact Respondent was “looking into” a Kohler dealership does not allow Respondent to register domain names containing Complainant’s marks. 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).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”). Respondent has registered and used the domain names in bad faith.
Complainant claims Respondent had actual knowledge of Complainant's rights in the KOHLER mark. This is admitted by implication because Respondent wanted to become a Kohler generator dealer. An important part of any dealership program is the trademark. See also Minicars 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 "actual knowledge of Complainant's mark when registering the disputed domain name"). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent registered and used the disputed domain names with actual knowledge of Complainant’s mark, constituting bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kohlergeneratorcapecod.us> and <kohlergeneratorscapecod.us> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, October 17, 2016
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