national arbitration forum

 

DECISION

 

Kohler Co. v. Li Jin Zhou

Claim Number: FA1110001411025

 

PARTIES

Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Li Jin Zhou (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kohlerl.com>, registered with Xin Net Technology Corporation.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2011; the National Arbitration Forum received payment on October 13, 2011. The Complaint was submitted in both Chinese and English.

 

On October 12, 2011, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <kohlerl.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name.  Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 October 19, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 8, 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@kohlerl.com.  Also on October 19, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 any response from Respondent.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <kohlerl.com> domain name is confusingly similar to Complainant’s KOHLER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <kohlerl.com> domain name.

 

3.    Respondent registered and used the <kohlerl.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Kohler Co., provides engines and generators, plumbing, and other products, including furniture and accessories, cabinetry, and tiles. Complainant owns a trademark registration for the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,352,028 registered December 11, 2007).

 

Respondent, Li Jin Zhou, registered the <kohlerl.com> domain name on April 22, 2011. The disputed domain name hosts a website selling competing goods.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration for the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,352,028 registered December 11, 2007). Complainant also provides evidence of what appear to be trademark registrations with another trademark agency, but as the documents seem to be in Chinese and there is no translation provided, the Panel is unable to read the documents. The Panel nevertheless finds, however, that the USPTO trademark registration is sufficient to establish Complainant’s rights in the KOHLER mark under Policy ¶ 4(a)(i), even though Respondent lives or operates in China and not the U.S. 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant asserts that Respondent’s <kohlerl.com> domain name is confusingly similar to Complainant’s KOHLER mark as the only additions to the mark are the extra letter “l” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a single extra letter is insufficient to negate confusing similarity. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).). The Panel also concludes that attaching the gTLD “.com” is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore determines that Respondent’s <kohlerl.com> domain name is confusingly similar to Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i).

 

The Panel deems Policy ¶ 4(a)(i) met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent does not possess rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant establish a prima facie case against Respondent before Respondent has the burden to prove its rights and legitimate interests. In this instance, Complainant has adequately presented a prima facie case, but Respondent has failed to respond. As a result, the Panel may assume that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provides that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”); see also Vanguard Group Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel elects, however, to consider the evidence in light of the Policy ¶ 4(c) factors in order to make a complete determination of whether Respondent has any rights and legitimate interests in the disputed domain name.

 

Complainant argues that Respondent has no trademark registrations or other rights to the disputed domain name. Complainant alleges that Respondent is not commonly known by the <kohlerl.com> domain name as the WHOIS information identifies the registrant as “Li Jin Zhou.” Complainant also contends that it has not granted Respondent any license, permission, or authorization to use Complainant’s mark in any way. Based on the WHOIS information and other evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name).

 

Complainant argues that Respondent uses the <kohlerl.com> domain name to sell competing goods and provides a screenshot of the resolving website in support of this allegation. The Panel finds that selling competing goods under Complainant’s mark does not satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) as a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

Complainant asserts that Respondent’s registration of the <kohlerl.com> domain name constitutes typosquatting because the only difference between the disputed domain name and the mark is the extra letter “l” at the end, which represents a likely typographical error. The Panel finds that typosquatting is further evidence that Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also National Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”). 

 

The Panel deems Policy ¶ 4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent sells competing products, which may be counterfeit products, at the <kohlerl.com> domain name. By using Complainant’s mark in the disputed domain name to sell competing products that may be indistinguishable from Complainant’s, Complainant asserts that Respondent disrupts Complainant’s business by diverting potential customers away from Complainant and toward Respondent. The Panel determines that this disruptive diversion reveals bad faith registration and use according to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Complainant contends that Respondent intentionally registered the <kohlerl.com> domain name containing Complainant’s KOHLER mark in order to attract Complainant’s Chinese customers and create confusion as to the source, affiliation, or sponsorship of Respondent’s resolving website. Complainant argues that as the resolving website is a commercial website that sells competing goods, Respondent likely profits from these attracted, diverted, and misled consumers. The Panel thus holds that Respondent’s activities indicate bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).  

 

Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the KOHLER at the time of the disputed domain name’s registration as demonstrated by Respondent’s use of the KOHLER mark in the disputed domain name, its use of Complainant’s copyright protected images, and its sale of competing products (potentially fake versions of Complainant’s products). The Panel agrees with Complainant and finds that Respondent’s knowledge of Complainant’s rights in the mark demonstrates bad faith registration according to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also 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."). 

 

The Panel has previously determined that Respondent engaged in typosquatting in its registration of the confusingly similar <kohlerl.com> domain name. The Panel further concludes that Respondent’s typosquatting also supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).

 

The Panel deems Policy ¶ 4(a)(iii) satisfied.

 

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 <kohlerl.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  November 21, 2011

 

 

 

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