Kohler Co. v. Luxaris
Claim Number: FA1106001396644
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Luxaris (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlertoiletstore.com>, registered with GoDaddy.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2011; the National Arbitration Forum received payment on July 1, 2011.
On July 4, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlertoiletstore.com> domain name are registered with Internet.bs Corp., INTERNET.BS CORP., GoDaddy.com, Inc. and that Respondent is the current registrant of the names. Internet.bs Corp., INTERNET.BS CORP., and GoDaddy.com, Inc. has verified that Respondent is bound by the Internet.bs Corp., INTERNET.BS CORP., and GoDaddy.com, 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 July 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2011 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@kohlertoiletstore.com. Also on July 6, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kohlertoiletstore.com> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlertoiletstore.com> domain name.
3. Respondent registered and used the <kohlertoiletstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., owns the KOHLER mark. Complainant has registered its mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,352,028 filed October 10, 2005; registered December 11, 2007). Complainant uses the KOHLER mark to market plumbing and other products.
Respondent, Luxaris, registered the disputed domain name on July 12, 2007. The <kohlertoiletstore.com> domain name resolves to a website which sells products that compete with those that Complainant provides.
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 asserted that it has rights in the KOHLER mark. Registration of a mark with a federal trademark authority sufficiently establishes rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”). Panels consistently find that the relevant date of rights in a trademark with the USPTO is the date on which the registration was filed. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel has evidence of Complainant’s registration of the KOHLER mark with the USPTO (Reg. No. 3,352,028 filed October 10, 2005; registered December 11, 2007). The Panel thus finds that Complainant has rights in the KOHLER mark for the purposes of Policy ¶ 4(a)(i) dating back to October 10, 2005.
Respondent’s <kohlertoiletstore.com> domain name is confusingly similar domain name to Complainant’s KOHLER mark. The addition of the generic term “store” and the descriptive term “toilet” fails to distinguish the disputed domain name from Complainant’s KOHLER mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”). Likewise, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is a necessary feature of a domain name and does not differentiate the domain name from Complainant’s mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel finds, therefore, that the <kohlertoiletstore.com> domain name is confusingly similar to Complainant’s KOHLER mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights and legitimate interests in the disputed domain name. Complainant, having made a prima facie case in support of this claim, has shifted the burden to Respondent. Respondent’s failure to submit a Response allows the Panel to infer acceptance of Complainant’s assertions. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). However, the Panel will review the record to determine whether Respondent has rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Respondent has not been authorized by Complainant to use the KOHLER mark. Additionally, the WHOIS information for the disputed domain name lists “Luxaris” as the domain name registrant. The Panel finds that the Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The <kohlertoiletstore.com> domain name resolves to a website which sells products that compete with Complainant’s business. The products being sold include faucets, sinks, toilets, and other goods and services. The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
Respondent’s registration and use of the <kohlertoiletstore.com> domain name was done in bad faith because it disrupts Complainant’s business. Cases such as DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) and Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) have found that the sale of competing goods at a disputed domain name disrupts the business of the complainant. Respondent sells products in competition with Complainant through the <kohlertoiletstore.com> domain name. Complainant’s intended customers are diverted to Respondent’s website and some will inevitably purchase goods from Respondent instead of Complainant. Thus, the Panel finds that the registration and use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii).
Respondent has registered a confusingly similar domain name, causing Internet users to become confused as to the association of the <kohlertoiletstore.com> domain name to Complainant’s mark. The fact that Respondent sells products similar to Complainant’s products increases this confusion. Respondent profits off this confusion when its products are sold through the disputed domain name. The Panel finds that Respondent registered and uses the disputed domain name for commercial gain, which constitutes bad faith under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlertoiletstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 4, 2011
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