Kohler Co. v. Tony Haryanto
Claim Number: FA1309001517638
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Tony Haryanto (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlermoxie.com>, registered with GODADDY.COM, LLC.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2013; the National Arbitration Forum received payment on September 4, 2013.
On September 3, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <kohlermoxie.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 2013 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@kohlermoxie.com. Also on September 5, 2013, the 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 September 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 issues 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant is a leader in the bath fixture industry, best known for its iconic bath products. Complainant’s business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices around the world.
2. Complainant has registrations with the United States Patent and Trademark Office (“USPTO”) for its KOHLER mark (Reg. No. 577,392 registered July 14, 1953) and MOXIE mark (Reg. No. 3,269,796 registered July 24, 2007).
3. Respondent’s <kohlermoxie.com> domain name is nearly identical and confusingly similar to Complainant’s marks.
a. The disputed domain name fully incorporates the KOHLER and MOXIE marks.
b. Respondent ads the generic top-level domain “.com” to the disputed domain name.
4. Respondent has no rights or legitimate interests in the <kohlermoxie.com> domain name.
a. Complainant has never licensed, authorized or given Respondent permission to use any of its marks.
b. Respondent has no trademark or intellectual property rights in the disputed domain name.
c. Respondent has never been commonly known by the disputed domain name.
d. The WHOIS information for the disputed domain name lists “Tony Haryanto” as registrant.
e. Respondent registered the disputed domain name after Complainant acquired rights in its registered marks.
f. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
5. Respondent registered and is using the <kohlermoxie.com> domain name in bad faith.
a. Respondent had actual knowledge of Complainant’s mark when it registered the disputed domain name.
b. Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
c. Respondent uses the disputed domain name to resolve to a website advertising goods and services under the KOHLER and MOXIE marks.
d. Respondent uses the disputed domain name to advertise and sell purported products of Complainant, thereby disrupting Complainant’s business.
B. Respondent
Respondent failed to submit a response. Respondent registered the <kohlermoxie.com> domain name on January 4, 2013.
Complainant established that it had rights in the marks contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected marks.
Respondent registered and used the disputed domain name in bad faith.
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."
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.
In view of Respondent's failure to submit a response, the Panel decides 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.”).
Complainant asserts that its trademark registrations with the USPTO for the KOHLER mark (Reg. No. 577,392 registered July 14, 1953) and MOXIE mark (Reg. No. 3,269,796 registered July 24, 2007), used in connection with its offerings in the bath fixture industry, are evidence of its rights in the marks. Prior findings by other panels confirm that trademark registrations demonstrate a complainant’s rights in the claimed mark sufficient to satisfy Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel agrees that Complainant’s evidence of USPTO registrations afford it rights in the KOHLER and MOXIE marks under Policy ¶ 4(a)(i). The Panel notes that Respondent is located in Indonesia, but nonetheless determines that Complainant’s rights in the claimed marks prevails regardless of Respondent’s country of residence. 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).
Complainant alleges that the <kohlermoxie.com> domain name is confusingly similar to the KOHLER mark, claiming that the domain name merely combines both of Complainant’s KOHLER AND MOXIE marks, with the addition of the generic top-level domain (“gTLD”) “.com.” The Panel in McGraw-Hill Co., Inc. v. Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008), stated that the <glencoemcgrawhill.com> domain name was confusingly similar to the complainant’s GLENCOE and MCGRAW-HILL marks under the Policy. Further, the panel in Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), concluded that adding a gTLD such as “.com” did not affect the domain name for the purposes of determining confusing similarity. The Panel therefore finds that the <kohlermoxie.com> domain name is confusingly similar to the KOHLER mark and MOXIE mark pursuant to Policy ¶ 4(a)(i), because the domain name combines two of Complainant’s marks and adds a gTLD.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent has never been commonly known by the <kohlermoxie.com> domain name and has never used any mark similar to the domain name by which Respondent may have come to be known. Complainant contends that its allegation is supported by the WHOIS registration, which identifies the registrant as “Tony Haryanto.” See Complainant’s Exhibit B. The Panel is convinced by Complainant’s argument and the evidence indicating that Respondent appears to be known by an unrelated name, and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Complainant claims that Respondent’s use of the <kohlermoxie.com> domain name fails to show a bona fide or legitimate business use, as the resolving website prominently uses the marks to advertise Complainant’s products. Previous panels have stated that by using a domain name to display a complainant’s mark and advertise its products for sale is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). The Panel finds that Respondent’s use of the domain name in the present case falls under the same category, and as a result, determines that Respondent does not make a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name.
Complainant alleges that Respondent advertises and sells products displaying the KOHLER and MOXIE marks, which Complainant claims is “highly detrimental” to its reputation and disruptive to its business. Complainant argues that Respondent uses the <kohlermoxie.com> domain name to direct Internet users to a website containing unverifiable information about Complainant’s products and encourages consumers to purchase the products. Complainant alleges that the merchandise for sale may or may not be genuine KOHLER or MOXIE products, and may lead consumers to be misinformed. The Panel finds that Respondent’s use of the disputed domain name appears to disrupt Complainant’s business, whether by selling Complainant’s products or counterfeit items, and is therefore evidence of Respondent’s Policy ¶ 4(b)(iii) bad faith registration and use. See 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).”); see also Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant argues that Respondent’s bad faith registration and use is demonstrated in part by Respondent’s intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s KOHLER and MOXIE marks. Complainant claims that Respondent uses the <kohlermoxie.com> domain name to advertise goods and services under the two marks in a manner that trades on Complainant’s goodwill. Complainant further contends that Respondent advertises and sells purported KOHLER and MOXIE products at the resolving website. The Panel notes that Complainant states that it cannot verify the authenticity of the advertised products, and claims that they may be either actual KOHLER and MOXIE products, or they may be counterfeit. The Panel finds that Respondent derives income by making sales of products bearing the KOHLER and MOXIE mark, regardless of their authenticity, resulting in consumer confusion between Complainant and Respondent’s website, thus revealing Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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).
Finally, Complainant alleges that Respondent had actual knowledge of Complainant’s KOHLER and MOXIE marks, as Respondent uses both marks in the disputed domain name. Complainant claims that because Respondent registered a domain name incorporating two famous trademarks belonging to a well-known company, Respondent’s registration of the <kohlermoxie.com> domain name gives rise to an inference of bad faith. The Panel agrees, and concludes that because the domain name incorporates two of Complainant’s marks, it is likely Respondent had actual knowledge of Complainant’s rights in the KOHLER and MOXIE marks, and finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii) by registering the <kohlermoxie.com> domain name. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlermoxie.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: October 5, 2013
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