Kohler Co. v. Christopher
Kohler d/b/a The Kohler Company
Claim Number: FA0801001128464
PARTIES
Complainant is Kohler Co. (“Complainant”), represented by Paul
D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thekohlercompany.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 9, 2008; the
National Arbitration Forum received a hard copy of the Complaint on January 10, 2008.
On January 10, 2008, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <thekohlercompany.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 January 15, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 4, 2008 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@thekohlercompany.com by
e-mail.
A Response was received on February 4,
2008. The Response was deficient
under ICANN Rule 5 as the hard copy was not timely received.
Complainant nevertheless chose to file Additional Submissions which were
received on February 11, 2008.
Respondent’s Additional Submissions were received on February 15, 2008.
On February 12, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <thekohlercompany.com> domain name is confusingly
similar to Complainant's mark.
2. Respondent has no rights or legitimate interest
in the <thekohlercompany.com> domain name.
3. Respondent has registered and used the <thekohlercompany.com>
domain name in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request on the
grounds that the <thekohlercompany.com> domain name is not confusingly
similar, that he has a legitimate interest in the domain name and that he did
not act in bad faith.
FINDINGS
Complainant asserts rights in the KOHLER mark by
virtue of several trademark registrations with the United States Patent and
Trademark Office.
The disputed domain name
was registered
on April 23, 2007.
At the time the complaint
was filed, it was used in
conjunction with an "online department store" which sells, among
other products, food and personal care
products.
These products competed
directly with the goods sold by Complainant.
Respondent has modified
the website to which the disputed domain name resolves. It now resolves to what appears
to be the home page of "World Wide Group".
Respondent argues that
the disputed domain name is
based on his surname.
He argues that he registered the disputed domain name to reflect his surname, and a business selling products wholly
unrelated to those of Complainant. His business allegedly consisted primarily
of energy bars and sport drinks.
At some time in the dispute, Respondent hired counsel who, on behalf of
Respondent, made a demand for a payment of $500 (well in excess of any out of
pocket registration fees) in a letter dated June 20, 2007.
The negotiations between
the parties broke
down.
DISCUSSION
Procedural Issue
Although Respondent’s electronic submission was received in a timely manner, Respondent failed to submit a timely hard copy as required by ICANN Rule 5.
The Panel has sole discretion as to the amount of weight given to the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). The Panel may decide to accept the Response. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).
In this particular case, the Panel decides to consider the Response as Complainant has chosen to file Additional Submissions. By considering the Response in the Additional Submissions, the Complainant has not been prejudiced in the presentation of its case.
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that the trademark registrations
establish Complainant’s rights in the KOHLER mark for purposes of Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also U.S. Office of Pers. Mgmt. v.
MS Tech. Inc., FA 198898 (Nat. Arb. Forum
Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that
determination.”).
The question is whether the <thekohlercompany.com> domain name is confusingly similar to Complainant’s KOHLER mark.
The disputed domain name combines Complainant’s KOHLER mark with the generic words “the” and “company,” which have a direct relationship to Complainant’s mark.
The Panel finds
that these additions, together with the generic top-level domain “.com,” are
not sufficient to distinguish the disputed domain name from Complainant’s mark
under Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that 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) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Although the WHOIS information indicates that Respondent is “Christopher Kohler d/b/a The Kohler Company,” there is no other evidence to indicate that Respondent is known by the <thekohlercompany.com> domain name.
Complainant has not authorized Respondent to use its mark in any way.
Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita,
FA 155461 (Nat. Arb. Forum June 17,
2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also City
News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5,
2004) (“Although Respondent’s WHOIS information lists its name as
‘citynewsandvideo,’ there is no evidence before the Panel to indicate that
Respondent is, in fact, commonly known by the disputed domain name
<citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent was also using the <thekohlercompany.com> domain name to market goods in competition with Complainant.
Respondent’s use of
the disputed domain name is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i),
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003)
(“Respondent's demonstrated intent to divert Internet users seeking
Complainant's website to a website of Respondent and for Respondent's benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it
is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website).
The Panel finds that Respondent is using the <thekohlercompany.com> domain name to disrupt Complainant’s business, in violation of Policy ¶ 4(b)(iii).
The Panel finds that Respondent’s use of the disputed domain name is a competitive use that disrupts Complainant’s business. It finds bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Additionally,
the Panel finds that Respondent is attempting to commercially gain from a
likelihood of confusion that may be created by the <thekohlercompany.com> domain name and resulting website, and
Complainant’s affiliation therewith. The
Panel finds sufficient evidence to indicate bad faith registration and use
under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb.
Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet
users seeking the complainant’s site to its own website for commercial gain); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
The Panel also
finds bad faith registration and use under Policy ¶ 4(a)(iii)
as Respondent must have had actual and / or constructive knowledge of
Complainant’s KOHLER mark when registering the disputed domain name. See Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thekohlercompany.com> domain name be
TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: February 25, 2008
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