Kohler Co. v. Robert Von Goetzman
Claim Number: FA0708001061157
Complainant is Kohler Co. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohler-engines.com> and <kohlercommand.com>, registered with Schlund+Partner Ag.
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 National Arbitration Forum electronically on August 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2007.
On August 14, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <kohler-engines.com> and <kohlercommand.com> domain names are registered with Schlund+Partner Ag and that the Respondent is the current registrant of the names. Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 August 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 2007 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 email@example.com and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 4, 2007.
On September 7, 2007, Complainant filed an Additional Submission.
On September 11, 2007, Respondent filed an Additional Submission.
On September 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. The Offending Domains are confusingly similar
to the marks in which the
Complainant has rights.
2. Respondent has no rights or legitimate interests in the Domain Names.
3. The Domain Names are registered and used in bad faith.
1. Confusing similarity is not contested.
2. Respondent sells Kohler Brand engines, and
has done so with support from
Complainant for an extended period.
3. The only engines that are being sold or have
been sold on the subject sites are
4. Within Kohler’s dealer agreement, the right
to use Kohler’s marks for that
purpose is assigned.
5. Complainant and a company affiliated with
Respondent are parties to a
contract called “Atomz Search Software License and Services Agreement.”
C. Additional Submissions
(a) The Response is disorganized, difficult to follow, and contains much that is simply not relevant.
(b) A reseller does not have an automatic right to register a domain name containing a manufacturer’s mark.
(c) Complainant denies an assignment of the right to use Kohler’s mark in the dealer agreement.
(a) Respondent takes issue with assertions of irrelevant or disorganized arguments and representations.
(b) Respondent reasserts his argument that the Atomz software agreement has a bearing on this domain name dispute.
(c) Only Kohler products are being sold on the disputed sites.
FINDINGS AND DISCUSSION:
This squarely appears to be a dispute between a manufacturer and a distributor.
Respondent contends that he is an authorized re-seller of Complainant’s goods based upon its alleged contractual agreement with Complainant. While Complainant did not disclose this in the Complaint, it has not rejected the assertion in its Additional Submission. The “front pages” of <kohler-engines.com> and <kohlercommand.com> each state that “This is NOT the official company website of Kohler Engines of Kohler Corporation. This is a dealer site that sells Kohler Engines and parts.” A link to the official Kohler site is then prominently displayed. Accordingly, the greater weight of the evidence demonstrates that Respondent is a licensee of Complainant, reselling its products. The Panel finds that Respondent is using the <kohler-engines.com> and <kohlercommand.com> domain names in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that the respondent has rights and legitimate interests in the domain names in connection with its business based on the acquisition, re-conditioning and re-sale of used Kittinger furniture); see also Ty Inc. v. Perryman, 306 F.3d 509, 513 (7th Cir. 2002) (finding that where there is a secondary market for goods, the primary market seller cannot prevent a secondary market seller from using a version of its trademark in a domain name to describe the secondary market goods being sold).
Respondent represents himself in two capacities. On the one hand, he is operating a business which re-sells Complainant’s goods. On the other hand, he claims to be involved with a company that runs “Search Engines Spiders and perform[s] numerous computer support tasks.” Respondent refers to a company called “Atomz” which has a software license and service agreement with Complainant to provide search engines on Complainant’s <kohlerengines.com> website. Respondent contends that this is a dealer agreement which gives Respondent the right to use Complainant’s KOHLER marks in domain names. In an e-mail correspondence to the National Arbitration Forum dated August 15, 2007, Respondent indicated that he intends to file a lawsuit against Complainant for breach of contract.
Complainant makes no reference to this contractual agreement in the Complaint, and does not acknowledge any sort of contractual or working relationship with Respondent. In its additional submission, Complainant alleges “Atomz” to be a non-party to the instant Complaint, and further asserts that that agreement is unrelated to this action. Complainant also contends that this agreement does not confer rights to use the KOHLER mark in domain names, and that Complainant has not assigned or licensed rights to the KOHLER mark to any third party. Complainant alleges that Respondent had actual or constructive knowledge of Complainant prior to registering the disputed domain names. Complainant also alleges in the Complaint that Respondent is not licensed or authorized to use any of Complainant’s marks, or any variations thereof.
Based upon Respondent’s assertions, the Panel finds that Respondent has one or more contractual relationships with Complainant. The central issue in this case would be whether such contractual agreement licenses or authorizes Respondent to use Complainant’s KOHLER mark. The Panel determines that this issue is outside the scope of a UDRP proceeding, and therefore chooses to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”).
The Panel concludes that the Complaint shall be dismissed.
John J. Upchurch, Panelist
Dated: October 5, 2007
National Arbitration Forum
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