Kohler Co. v. Christopher Kohler
Claim Number: FA1309001517685
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Christopher Kohler (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theboldlook.net>, registered with GoDaddy.com, LLC.
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 September 3, 2013; the National Arbitration Forum received payment on September 4, 2013.
On September 4, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <theboldlook.net> 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@theboldlook.net. 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 October 1, 2013, 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <theboldlook.net> domain name is confusingly similar to Complainant’s THE BOLD LOOK OF KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <theboldlook.net> domain name.
3. Respondent registered and uses the <theboldlook.net> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant used the mark THE BOLD LOOK OF KOHLER in connection with the sale of plumbing products since 1967. Complainant has registered its THE BOLD LOOK OF KOHLER mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,137,310 registered on June 24, 1980).
Respondent registered the disputed <theboldlook.net> domain name on July 25, 2006, and uses it to promote Respondent’s services under the name “Christopher Kohler.”
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 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.”).
The Panel finds that Complainant has rights in its THE BOLD LOOK OF KOHLER mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Respondent <theboldlook.net> domain name contains the first three words in Complainant’s mark, without the spaces, along with the generic top-level domain (“gTLD”) “.net.” The Panel notes that the lack of spaces and the gTLD are not relevant to this analysis. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel also notes that, although the dominant term KOHLER is not included in the disputed domain name, it resolves to a website about the services of Respondent Christopher Kohler, creating an association with the full mark THE BOLD LOOK OF KOHLER. Previous panels have found that the use of only part of a mark can create confusing similarity in certain circumstances. See, e.g., Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel finds that, given Respondent’s use of the name Kohler at the resolving website, the <theboldlook.net> domain name is confusingly similar to Complainant’s THE BOLD LOOK OF KOHLER mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 states that Respondent has not received any license, permission, or authorization to use Complainant’s THE BOLD LOOK OF KOHLER mark in a domain name. The WHOIS information for the <theboldlook.net> domain name identifies Respondent as “Christopher Kohler.” In Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that when there is no evidence to suggest a connection with the respondent and the complainant’s mark, a finding under Policy ¶ 4(c)(ii) is inappropriate. The Panel similarly finds that nothing in the record suggests that Respondent is commonly known by the <theboldlook.net> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the domain name to promote Respondent’s services and provide Internet users with his resume. Complainant claims that customers will likely be deceived into believing that Respondent’s offering services and promoting his resume are associated with Complainant’s plumbing goods. Complainant argues that Respondent is capitalizing on the fact that his surname, Kohler, implies a connection with Complainant’s THE BOLD LOOK OF KOHLER mark through Respondent’s use of the <theboldlook.net> domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy ¶ 4(c)(i), nor is the use legitimately noncommercial or fair under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent seeks to intentionally attract commercial gains by creating the likelihood that Internet users will mistake Complainant as the source, sponsor, or endorsee of Respondent’s offerings through the <theboldlook.net> domain name. The Panel notes that Respondent uses the disputed domain name to promote his services as a creative consultant. The Panel agrees that there is likely that Internet users who see Respondent’s name “Christopher Kohler” will believe that Respondent is in some way connected with Complainant and its THE BOLD LOOK OF KOHLER mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Thus, the Panel finds that Respondent’s use of the disputed domain name demonstrates the intent to confuse, constituting bad faith under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent is capitalizing on a play on words with its use of the phrase “theboldlook” in connection with Respondent’s surname “Kohler.” The Panel agrees and finds that, given Complainant’s long-standing and well-known mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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 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 <theboldlook.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 8, 2013
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