Kohler Co. v. Thomas Mcivor
Claim Number: FA0901001245293
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 <kohlersucks.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
David S. Safran, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 29, 2009; the National Arbitration Forum received a
hard copy of the Complaint on January 30, 2009.
On February 1, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide
confirmed by e-mail to the National Arbitration Forum that the <kohlersucks.com> domain name is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide
has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet
Names Worldwide 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 5, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 25, 2009 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@kohlersucks.com by
e-mail.
A timely Response was received and determined to be complete on
February 25, 2009.
An Additional Submission was timely filed by Complainant on March 2,
2009.
An Additional Submission was timely filed by Respondent on March 6,
2009.
On March 3, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the domain <kohlersucks.com> is confusingly similar to its KOHLER marks
since it fully incorporates same and addition of the word “sucks” does not
create a dissimilar commercial impression. Complainant also asserts that
Respondent has no rights or legitimate interests in the domain <kohlersucks.com> and that the
domain was registered and is used in bad faith.
B. Respondent
Respondent contends that the domain has never been used for commercial
gain and the uses made thereof were within its free speech rights as an
expression of its displeasure with Kohler and as a vehicle for enabling others
to do so as well.
C. Additional Submissions
Complainant’s and Respondents Additional Submissions merely amplify the
points made by the parties in their initial submissions and to cast aspersions
on the each others positions.
FINDINGS
Complainant has failed to provide evidence,
as opposed to arguments and citations, demonstrative of bad faith use and
registration of the subject domain, and thus, has failed to meet its burden of
proof. No evidence of commercial use of the domain has been submitted. No
evidence which would show any intent by Respondent other than to voice its
displeasure with Complainant has been provided; any issues as to violation of
the rights of a third party with respect to unauthorized “framing” of the
Better Business Bureau website, assuming that it in fact occurred in violation
of the Bureau’s policy, this fact cannot inure to the benefit of Complainant where
the purpose for such a referral is noncommercial and is for free speech
expression purposes. The “sucks” suffix would create an initial impression of a
complaint website that is unaffiliated with Complainant, and when coupled with
a link to a better business bureau website, would reinforce this fact and be
viewed as a vehicle for enabling visitors to voice complaints.
DISCUSSION
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.
In view of the Panel’s finding that
Complainant has failed to meet its burden of establishing bad faith
registration and use of the domain <kohlersucks.com>,
this element need not be commented upon.
In view of the Panel’s finding that
Complainant has failed to meet its burden of establishing bad faith
registration and use of the domain <kohlersucks.com>,
this element need not be commented upon.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent argues
that it never intended to use the disputed domain name commercially, and has
not received any money from its use of the domain name. The Panel finds that Respondent has not
registered or used the disputed domain name in bad faith since Respondent has
not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other
conduct that would constitute bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See Societe des Produits
Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001)
(finding that where the respondent has not attempted to sell the domain name for
profit, has not engaged in a
pattern of conduct depriving others of the ability to obtain domain names
corresponding to their trademarks, is not a competitor of the complainant
seeking to disrupt the complainant's business, and is not using the domain name
to divert Internet users for commercial gain, lack of bona fide use on
its own is insufficient to establish bad faith); see also Starwood Hotels
& Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb.
Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
UDRP ¶ 4(a)(iii)).
Respondent contends that it registered and used the domain <kohlersucks.com> within its free speech rights as an expression of its displeasure with Kohler and as a vehicle for enabling others to do so as well. The Panel finds that the “sucks” suffix would create an initial impression of a complaint website that is unaffiliated with Complainant, and when coupled with a link to a better business bureau website, would reinforce this fact and be viewed as a vehicle for enabling visitors to voice complaints. See Bloomberg L. P. v. Secaucus Group, FA 97077 (Nat. Arb. Forum June 7, 2001) (finding that “[I]n those cases where the registrant has added “-sucks” or some other word to the name of the person or company and used it as a domain name linked to a website that criticizes the person or company, the rights of the registrant have been uniformly upheld as a reasonable exercise of free speech rights, as well as a fair use of the person’s or company’s name.”); see also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that the Respondent has rights and legitimate interests to use the <wallmartcanadasucks.com> domain name as a forum for criticism of the complainant) ; see also Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (finding that the Respondent has free speech rights and legitimate First Amendment interests in the domain name <bridgestone-firestone.net> where the Respondent linked the domain name to a “complaint” web site about the Complainant’s products); see also Cabela's Inc. v. Cupcake Patrol, supra. (“The Panel notes that use of a "-sucks" domain name may be justified by fair use or legitimate noncommercial use considerations for free expression forums.”). The Respondent’s use falls within the “fair use” exception contained in Policy ¶ 4(c)(iii). The exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4 (c)(iii) of the Policy. See Bridgestone Firestone, Inc., supra.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <kohlersucks.com>
domain name be RETAINED by Respondent.
David S. Safran, Panelist
Dated: March 16, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum