Kohler Co. v Gary Daugherty
Claim Number: FA1609001693558
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Gary Daugherty (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohler-starters.com>, registered with TUCOWS, INC.
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 September 13, 2016; the Forum received payment on September 14, 2016.
On September 13, 2016, TUCOWS, INC. confirmed by e-mail to the Forum that the <kohler-starters.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 September 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@kohler-starters.com. Also on September 14, 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 10, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends in part as follows:
Complainant registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 590,052, registered May 18, 1954).
Respondent’s domain name, <kohler-starters.com>, is confusingly similar to Complainant’s mark, because it merely adds the industry descriptive term “starters” and a hyphen to the Complainant’s entire KOHLER mark, plus a generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent permission to use its KOHLER mark, and the Respondent is not commonly known as <kohler-starters.com>. Respondent is a competitor of Complainant, and is currently making no active use of this domain name. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and has been using the disputed domain name in bad faith. Respondent is Complainant’s direct competitor and is attempting to commercially gain by creating a likelihood of confusion as to the source, sponsorship, afilliation, or endorsement of its <kohler-starters.com> domain name. Respondent surely had actual knowledge of Complainant’s rights in the KOHLER mark, because it operates in the same industry as Complainant and the KOHLER mark has long achieved world-wide fame.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the KOHLER marks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademark.
Respondent currently holds the at-issue domain name inactively.
Respondent competes 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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the KOHLER mark through its registration of such mark 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).).
Respondent’s <kohler-starters.com>domain name contains Complainant’s entire KOHLER trademark with a hyphen, the generic term “starters,” and the top-level domain name “.com” all appended thereto. The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Indeed, “starters” is a descriptive term within the appliance industry where Complainant operates and the term thus further suggests the domain name’s reference to Complainant and Complainant’s trademark. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s KOHLER trademark under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
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 the at-issue domain name. 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 the at-issue domain name.
WHOIS information for the at-issue domain name lists “Gary Daugherty” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <kohler-starters.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the 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 holds the at-issue domain name inactively. 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 Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also, U.S. News & World Report, Inc. v. Zhongqi, FA917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
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.
Respondent’s <kohler-starters.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent holds the at-issue domain name without actively using it. Under the circumstances 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).
Additionally, Respondent registered the <kohler-starters.com> domain name knowing that Complainant had trademark rights in the KOHLER trademark. Respondent’s prior knowledge is evident because of the notoriety of Complainant’s trademark as well as Respondent’s being a competitor of Complainant. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's KOHLER trademark further indicates that Respondent registered and used the <kohler-starters.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 <kohler-starters.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 10, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page