Kohler Co. v. Domains Ventures
Claim Number:
FA0601000637373
Complainant
is Kohler Co. (“Complainant”), represented by Paul D. McGrady, of
Greenberg Traurig, LLP, 77 West Wacker Drive, Suite 2500, Chicago, IL
60601. Respondent is Domains
Ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, II 361001 Fujian, CN.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <wwwkohler.com>,
registered with Moniker Online Services, Inc.
or The undersigned certifies that has acted
independently and impartially and to the best of his knowledge has no known
conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National
Arbitration Forum electronically on January 30, 2006; the National Arbitration
Forum received a hard copy of the Complaint on January 31, 2006.
On February 3, 2006, Moniker Online Services, Inc.
confirmed by e-mail to the National Arbitration Forum that the <wwwkohler.com>
domain name is registered with Moniker Online Services, Inc. and that
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, Inc. registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On February 9, 2006, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of March 1, 2006 by which Respondent
could file a response to the Complaint, was transmitted to Respondent via
e-mail, post and fax, to all entities and persons listed on Respondent's
registration as technical, administrative and billing contacts, and to
postmaster@wwwkohler.com by e-mail.
Having received no response from Respondent, the
National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
On March 7, 2006, pursuant to Complainant's request to
have the dispute decided by a single-member Panel, the National Arbitration
Forum appointed Hn. Ralph Yachnin as Panelist.
Having reviewed the communications records, the
Administrative Panel (the "Panel") finds that the National
Arbitration 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." Therefore, the
Panel may issue its decision based on the documents submitted and in accordance
with the ICANN Policy, ICANN Rules, the National Arbitration 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
makes the following assertions:
1. Respondent’s <wwwkohler.com> domain name
is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate
interests in the <wwwkohler.com> domain name.
3. Respondent registered and used the <wwwkohler.com>
domain name in bad faith.
B. Respondent
failed to submit a Response in this proceeding.
Complainant,
Kohler Co., is a worldwide manufacturer and distributor of plumbing services,
power systems, and household appliances and accessories. Complainant maintains a business presence on
six continents through its forty-four manufacturing plants, twenty-six
subsidiaries and affiliates, and dozens of sales offices. Complainant has used the KOHLER mark in
commerce for at least 130 years.
Complainant
holds numerous trademark registrations for the KOHLER mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 94,999 issued January
20, 1914; Reg. No. 167,671 issued May 8, 1923; Reg. No. 577,392 issued July 14,
1953; Reg. No. 590,052 issued May 18, 1954; Reg. No. 2,235,466 issued March 23,
1999; Reg. No. 2,382,736 issued September 5, 2000; Reg. No. 2,766,196 issued
September 23, 2003). Complainant
registered the <kohler.com> domain name on November 8, 1994.
Respondent
registered the <wwwkohler.com> domain name on December 6,
2002. Respondent is using the disputed
domain name to misdirect Internet users to a webpage featuring links to
Complainant’s competitors, unrelated content, pornography, and pop-up
advertisements.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant
has established rights to the KOHLER mark by registering the mark with the
USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Respondent’s <wwwkohler.com> domain name is
confusingly similar to Complainant’s KOHLER mark because it contains the entire
mark and merely adds the letters “www” to the front of the mark. Panels have held that the addition of “www”
to the beginning of a mark does not make a domain name distinctive from a
registered mark. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the
letters "www" are not distinct in the "Internet world" and
thus the respondent 's <wwwmarieclaire.com> domain name is confusingly
similar to the complainant's MARIE CLAIRE trademark); see also Dana Corp. v.
$$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19,
2002) (finding the respondent's <wwwdana.com> domain name confusingly
similar to the complainant's registered DANA mark because the complainant's
mark remains the dominant feature).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent lacks rights and legitimate interests in the <wwwkohler.com>
domain name. Complainant must first
make a prima facie case in support of its allegations, and then the
burden shifts to the Respondent to show it does have rights or legitimate
interests pursuant to Policy ¶ 4(a)(ii).
See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (once the complainant asserts that the respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to the
respondent to provide “concrete evidence that it has rights to or legitimate
interests in the domain name at issue”); see also Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (
“Proving that the Respondent has no rights or legitimate interests in respect
of the Domain Name requires the Complainant to prove a negative. For the
purposes of this sub paragraph, however, it is sufficient for the Complainant
to show a prima facie case and the burden of proof is then shifted on to the
shoulders of Respondent. In those
circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.”).
Respondent’s
failure to answer the Complaint raises a presumption that Respondent has no
rights or legitimate interests in the <wwwkohler.com> name. See Canadian Imperial Bank of Commerce v.
D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed); see also Bank
of Am. Corp. v. McCall, FA 135012 (Nat.
Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in
its failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.”). However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent
has registered the domain name under the name “Domains Ventures,” and there is
no other evidence in the record suggesting that Respondent is commonly known by
the <wwwkohler.com> domain name.
Thus, Respondent has not established rights or legitimate interests in
the <wwwkohler.com> domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use).
Moreover,
Respondent’s <wwwkohler.com> domain name, which is confusingly
similar to Complainant’s KOHLER mark, resolves to a website containing links to
Complainant’s direct competitors, unrelated content, pornography, and pop-up
advertisements. None of these uses of
the disputed domain name constitutes a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use of the domain name pursuant to Policy ¶ 4(c)(iii), because Respondent earns
referral fees for diverting Internet users seeking Complainant’s services to
other websites. See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that
the respondent did not use a domain name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the domain name to divert Internet users seeking
the complainant's goods or services to pornographic material and links, while
presumably earning a commission or referral fees from advertisers); see also
Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20,
2003) (finding that the respondent used a domain name for commercial benefit by
diverting Internet users to a website that sold goods and services similar to
those offered by the complainant and thus, was not using the name in connection
with a bona fide offering of goods or services nor a legitimate
noncommercial or fair use).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
has registered and is using the <wwwkohler.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv), because it is diverting Internet users to
a website featuring links to Complainant’s competitors, unrelated content,
pornography, and pop-up advertisements.
Respondent likely receives click-through fees for each consumer it
redirects to other websites. Therefore,
Respondent is taking advantage of the likelihood of confusion between
Respondent’s domain name, the website content, and Complainant’s KOHLER mark,
and capitalizing on the goodwill associated with the mark. See Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
respondent engaged in bad faith use and registration by using domain names that
were identical or confusingly similar to the complainant’s mark to redirect
users to a website that offered services similar to those offered by the
complainant); see also Associated Newspapers Ltd.
v. Domain Manager, FA 201976 (Nat. Arb.
Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com>
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the
domain name provided links to Complainant's competitors and Respondent
presumably commercially benefited from the misleading domain name by receiving
‘click-through-fees.’”).
Furthermore,
Respondent’s use of the <wwwkohler.com> domain name, which is
merely a typosquatted variation of Complainant’s KOHLER mark, is evidence that
Respondent registered and used its disputed domain name in bad faith pursuant
to Policy ¶ (4)(a)(iii). Internet users
seeking Complainant’s website at the <kohler.com> domain name who
mistakenly omit the period after “www” resolve to Respondent’s website, leading
to consumer confusion over the source and affiliation of Respondent’s site with
Complainant’s KOHLER mark. Therefore,
Respondent is taking advantage of Internet users’ typographical errors for its
own commercial gain. See Black &
Decker Corp. v. Khan,
FA 137223 (Nat. Arb. Forum Feb. 3, 2003)
(finding the <wwwdewalt.com> domain name was registered to “ensnare those
individuals who forget to type the period after the ‘www’ portion of [a]
web-address,” which was evidence that the domain name was registered and used in
bad faith); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb.
Forum Feb. 25, 2003) (inferring that the respondent’s registration of the
<wwwremax.com> domain name, incorporating the complainant’s entire mark,
was done with actual notice of the complainant’s rights in the mark prior to
registering the infringing domain name, evidencing bad faith).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <wwwkohler.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March
21, 2006
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