Kohler Co. v. afhjjj asjkl'' a/k/a kjutg
Claim Number: FA1201001425152
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady, Jr. of Greenberg Traurig, LLP, Illinois, USA. Respondent is afhjjj asjkl'' a/k/a kjutg (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info>, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2012; the National Arbitration Forum received payment on January 18, 2012.
On January 18, 2012, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names are registered with GoDaddy.com Inc. and that Respondent is the current registrant of the names. GoDaddy.com Inc. has verified that Respondent is bound by the 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 January 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2012 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@bestkohlertoiletsupercheap.info and postmaster@bestkohlercabinetsupercheap.info. Also on January 19, 2012, 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 February 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names are confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names.
3. Respondent registered and used the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., is a provider of plumbing fixtures, engines and generators, personal care products, and other products under the KOHLER mark. Complainant owns several trademark registrations for its KOHLER mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 94,999 registered January 20, 1914) and with the Thailand Department of Intellectual Property (“TDIP”) (e.g., Reg. No. TM278215 registered March 24, 2008).
Respondent, afhjjj asjkl'' a/k/a kjutg, registered the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names on December 10, 2011. Respondent’s domain names redirect Internet users to Respondent’s commercial website selling competing bathroom cabinets and other supplies.
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 presented evidence that it owns rights in the KOHLER mark through its various trademark registrations with the USPTO (e.g., Reg. No. 94,999 registered January 20, 1914) and the TDIP (e.g., Reg. No. TM278215 registered March 24, 2008). Prior panels have determined that trademark registrations with national trademark authorities are sufficient for a complainant to establish protectable rights in that mark under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); 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’)”). Based upon this precedent and Complainant’s evidence, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the KOHLER mark.
The second element under Policy ¶ 4(a)(i) requires Complainant to establish that the disputed domain names are either confusingly similar or identical to its mark. Complainant notes that the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names contain the KOHLER mark entirely. Further, Complainant notes that both domain names contain the generic terms “best,” “super,” and “cheap,” as well as the descriptive terms “toilet” or “cabinet.” Complainant argues that within the context of its industry these terms do not alleviate the confusingly similar nature of the domain names. The Panel agrees and finds that the terms added above, whether they be descriptive or generic, do not create a domain name that is distinct from Complainant’s mark. See 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); 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.”). Further, the Panel notes that prior panels have determined that the affixation of a generic top-level domain name (“gTLD”) such as “.info,” is irrelevant to a 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); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names are confusingly similar to Complainant’s KOHLER mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges within its Complaint that Respondent does not have rights and legitimate interests in the disputed domain names. 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 <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant argues that it has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations incorporating any of Complainant’s marks. Further, the WHOIS information for the disputed domain names identifies “afhjjj asjkl'' a/k/a kjutg” as the registrant of the domain names, which the Panel finds to be dissimilar to the domain names in question. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent’s disputed domain names resolve to websites which sell competing bathroom cabinet and toilet products and accessories. Complainant argues that such competing use cannot be 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), and the Panel agrees. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); 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.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has submitted evidence to show that Respondent is using the disputed domain names to offer competing bathroom products for sale to the general public. Complainant asserts that this use is evidence of bad faith. The Panel agrees and determines that Respondent’s use of the disputed domain names creates a disruption of Complainant’s business which fits solely within the confines of Policy ¶ 4(b)(iii) in showing bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Further, Complainant argues that Respondent registered the disputed domain names in order to create confusion between the domain names and resolving websites and Complainant’s KOHLER mark. Complainant asserts that Respondent commercially benefits from this confusion by selling competing bathroom and toiletry goods. The Panel agrees and finds that Respondent registered and used the <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Complainant has satisfied 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 <bestkohlertoiletsupercheap.info> and <bestkohlercabinetsupercheap.info> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 27, 2012
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