national arbitration forum

 

DECISION

 

Kohler Co. v. Zhengguoqiu / Guoqiu Zheng

Claim Number: FA1110001412124

 

PARTIES

Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA.  Respondent is Zhengguoqiu / Guoqiu Zheng (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <jykohler.com>, registered with Bizcn.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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 18, 2011; the National Arbitration Forum received payment on October 19, 2011The Complaint was submitted in both Chinese and English.

 

On October 20, 2011, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <jykohler.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name.  Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.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 October 21, 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 10, 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@jykohler.com.  Also on October 21, 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 <jykohler.com> domain name is confusingly similar to Complainant’s KOHLER mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Kohler Co., uses its KOHLER mark to provide engines and generators, plumbing, and other products.  Complainant holds trademark registrations for its KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,352,028 registered December 11, 2007) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 142,981 registered December 25, 1980). 

 

Respondent, Zhengguoqiu / Guoqiu Zheng, registered the <jykohler.com> domain name on September 20, 2011.  The disputed domain name resolves to a website that sells competing products, including potential counterfeit versions of Complainant’s products.

 

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 asserts that it owns Policy ¶ 4(a)(i) rights in its KOHLER mark.  Complainant provides evidence of its trademark registrations for its KOHLER mark with the USPTO (Reg. No. 3,352,028 registered December 11, 2007) and SAIC (e.g., Reg. No. 142,981 registered December 25, 1980).  The Panel finds that Complainant’s trademark registrations sufficiently establish Complainant’s rights in its KOHLER mark pursuant to Policy ¶ 4(a)(i).  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).

 

Complainant contends that Respondent’s <jykohler.com> domain name is confusingly similar to Complainant’s KOHLER mark.  Complainant notes that the disputed domain name includes Complainant’s KOHLER mark, the letters “j” and “y,” and the generic top-level domain (“gTLD”) “.com.”  The Panel determines that the additions of letters and the gTLD fail to sufficiently distinguish the disputed domain name from Complainant’s mark.  See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Consequently, the Panel concludes that Respondent’s <jykohler.com> domain name is confusingly similar to Complainant’s KOHLER mark under Policy ¶ 4(a)(i).

 

The Panel concludes Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <jykohler.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).

 

Complainant asserts that Respondent is not commonly known by the <jykohler.com> domain name.  Complainant notes that the WHOIS information identifies “Zhengguoqiu / Guoqiu Zheng” as the registrant of the disputed domain name, which is not similar to the disputed domain name.  Complainant also states that Complainant has not licensed, permitted, or authorized Respondent to use Complainant’s KOHLER mark.  Based on this information and the lack of a Response, the Panel determines that Respondent is not commonly known by the <jykohler.com> domain name pursuant to Policy ¶ 4(c)(ii).  See 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 of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant contends that Respondent lacks rights and legitimate interests in the <jykohler.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Complainant asserts that Respondent’s disputed domain name resolves to a website that sells competing products, including potential counterfeit versions of Complainant’s products.  The Panel finds that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the <jykohler.com> domain name under Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel concludes Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered and uses the <jykohler.com> domain name in bad faith by selling competing products, including potential counterfeit products.  Complainant claims that such a use disrupts Complainant’s business.  The Panel agrees with Complainant and determines that Respondent registered and uses the <jykohler.com> domain name pursuant to Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Complainant claims that Respondent registered and uses the <jykohler.com> domain name for the purpose of attempting to attract, for commercial gain, Internet users to the website by creating confusion as to Complainant’s affiliation with the disputed domain name.  Complainant contends that Respondent profits from the sale of competing products and that Respondent’s use of a confusingly similar domain name evidences an attempt to create confusion.  Based on this evidence, the Panel holds that Respondent registered and uses the <jykohler.com> domain name in 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 Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the KOHLER mark.  While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also 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).  The Panel finds that Complainant did have actual knowledge of Complainant’s rights in its KOHLER mark based on the confusingly similar domain name and the sale of competing products on the resolving website.  Therefore, the Panel further holds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel concludes Policy ¶ 4(a)(iii) is 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 <jykohler.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  November 18, 2011

 

 

 

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