Kohler Co. v. Redfire Internet Marketing
Claim Number: FA1111001417320
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, Illinois, USA. Respondent is Redfire Internet Marketing (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlerengineparts.org>, registered with eNom, 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 November 28, 2011; the National Arbitration Forum received payment on November 29, 2011.
On December 1, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlerengineparts.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@kohlerengineparts.org. Also on December 5, 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 January 3, 2012, 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 <kohlerengineparts.org> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlerengineparts.org> domain name.
3. Respondent registered and used the <kohlerengineparts.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., manufactures and distributes furniture and accessories, cabinetry and tile, and also owns and operates resorts, recreation, and real estate endeavors internationally, including 44 manufacturing plants, 26 subsidiaries, and affiliates, and many sales offices. It owns numerous marks with the United States Patent and Trademark Office (“USPTO”) for its family of KOHLER marks (e.g., Reg. No. 590,052 issued May 18, 1954).
Respondent registered <kohlerengineparts.org> domain name on December 7, 2009. The disputed domain name resolves to a website that includes links to various websites that are in direct competition with Complainant’s business, in addition to purportedly providing general information about “Kohler Engine Parts.”
Respondent has been the respondent in UDRP proceedings in which the disputed domain names created by Respondent were transferred to the respective complainants. See Kohler Co. v. Redfire Internet Mktg., FA1339819 (Nat. Arb. Forum, Sept. 23, 2010); see also The Office Club, Inc. v. Redfire Internet Mktg., FA 1350208 (Nat. Arb. Forum, Nov. 9, 2010).
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.
The Panel finds that Complainant has established rights in the KOHLER marks under Policy ¶ 4(a)(i) via its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also finds that the trademark registrations are not required to be in the country wherein Respondent operates for the purposes of Policy ¶ 4(a)(i). See 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); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s disputed domain name <kohlerengineparts.org> is confusingly similar to its KOHLER mark, as it only adds the industry-specific words “engine” and “parts,” and a generic top-level domain (“gTLD”) “.com.” These changes do not adequately distinguish the domain name from Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i). See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). Regarding the addition of the gTDL, 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); 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 that Policy ¶ 4(a)(i) is satisfied.
Complainant argues that Respondent has no trademark or other rights to the KOHLER mark, and thus has no rights or legitimate interests in the disputed domain name <kohlerengineparts.org>. Under Policy ¶ 4(a)(ii), Complainant is required to make a prima facie showing in support of its allegations. Once Complainant produces a prima facie case, the burden of proof shifts to Respondent to demonstrate why it possesses rights or interests in the disputed domain name. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel determines that Complainant has produced a prima facie case. As a result of Respondent’s failure to submit an answer to the proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests in the domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name <kohlerengineparts.org>, and that Complainant’s KOHLER mark is famous in the United States and other jurisdictions. The WHOIS information gives no evidence that Respondent is commonly known by the domain name as it identifies the registrant as “Redfire Internet Marketing.” Complainant states that it did not grant Respondent “any license, permission, or authorization” that would allow Respondent to use any domain name using Complainant’s KOHLER mark. Due to the lack of evidence indicating that Respondent is commonly known by the domain name, as well as Respondent’s failure to reply, the Panel concludes that Respondent does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Oakley, Inc. v. Watson, D2000-1658 (WIPO May 3, 2001) (“It is clear that the value in the Oakley name has been created by the commercial use and registrations of the Complainant and it is also clear . . . that Respondent is taking advantage of the value created by the Complainant.”).
Complainant argues that Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services under Policy ¶ 4(c)(iii). The disputed domain name <kohlerengineparts.org> resolves to a website that purportedly provides information about Complainant’s products and lists links to other websites in direct competition with Complainant. A misdirected Internet user searching for Complainant’s website is led to the <kohlerengineparts.org> domain name and is offered the opportunity to click on the links listed. Complainant contends that because Respondent advertises the goods and services of some of Complainant’s primary competitors, it is not operating a bona fide or legitimate business under the disputed domain name. The Panel finds that Respondent’s use of the Complainant’s mark in the disputed domain name to lead visitors to Complainant’s competitors does not fall under 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 ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
On at least two other occasions, Respondent has been the respondent in UDRP proceedings in which the disputed domain names created by Respondent were transferred to the respective complainants. See Kohler Co. v. Redfire Internet Mktg., FA1339819 (Nat. Arb. Forum, Sept. 23, 2010); see also The Office Club, Inc. v. Redfire Internet Mktg., FA 1350208 (Nat. Arb. Forum, Nov. 9, 2010). The Panel finds that Respondent demonstrates a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent uses the disputed domain name to display pay-per-click links leading to competitors’ websites, which disrupts Complainant’s business. This constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent’s use of the domain name to divert Internet users to competitor’s websites for Respondent’s own financial gain is also evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlerengineparts.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 10, 2012
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