Kohler Co. v. Privacy Service
Claim Number: FA1505001621573
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Privacy Service (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlersinks.com>, registered with FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2015; the Forum received payment on May 29, 2015.
On May 29, 2015, FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <kohlersinks.com> domain name is registered with FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd has verified that Respondent is bound by the FABULOUS.COM PTY LTD.; Fabulous.com Pty Ltd 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 June 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2015 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@kohlersinks.com. Also on June 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 made the following contentions.
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the KOHLER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 94,999, registered January 20, 1914).
b. Respondent’s <kohlersinks.com> domain name is confusingly similar to Complainant’s KOHLER mark because it is differentiated by only the addition of the descriptive term “sinks” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Privacy Service” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s KOHLER mark.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has used the resolving website to download malware onto the computers of Internet users.
c. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has used the resolving website to host links competing with Complainant’s business operations as well as to sell competing goods and services.
3. Policy ¶ 4(a)(iii)
a. Respondent uses the resolving website for the purpose of disruption Complainant’s business.
b. Respondent uses the resolving website for commercial gain by taking advantage of the confusion of Internet users.
c. Respondent registered the <kohlersinks.com> domain name with actual knowledge of Complainant’s rights.
d. Respondent has used the resolving website to download malware onto the computers of Internet users.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of supplying bath fixtures, sinks and related plumbing products.
2. Complainant has rights in the KOHLER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 94,999, registered January 20, 1914).
3. The <kohlersinks.com> domain name was created on November 9, 2005 and Respondent came to be the registrant of the domain name on August 8, 2014. Respondent has used the resolving website to download malware onto the computers of Internet users and to host links competing with Complainant’s business operations as well as to sell competing goods and services.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the KOHLER mark in conjunction with its work in the worldwide sale of bath fixtures. Complainant submits that it has rights in the KOHLER mark through its registration with the USPTO (Reg. No. 94,999, registered on January 20, 1914). Complainant has provided documentation of this registration in Exhibit C. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant has rights in the KOHLER mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KOHLER mark. Complainant alleges that Respondent’s <kohlersinks.com> domain name is confusingly similar to Complainant’s KOHLER mark because it is differentiated by only the addition of the descriptive term “sinks” and the gTLD “.com.” Past panels have found that the addition of “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant urges that the term “sinks” is descriptive of its business, because Complainant sells bathroom fixtures. Past panels have found that adding words to a mark that are descriptive of the business conducted with the mark is not sufficient to differentiate between a domain name and a registered mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Therefore, the Panel finds that
Respondent’s <kohlersinks.com> domain name is confusingly similar to Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KOHLER mark and to use it in its domain name which is confusingly similar to the mark;
(b) Respondent registered the disputed domain name on August 8, 2014;
(c) Respondent has used the resolving website to download malware onto the computers of Internet users and to host links competing with Complainant’s business operations as well as to sell competing goods and services;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Privacy Service” as registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel finds that Respondent is not commonly known by the <kohlersinks.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate or noncommercial fair use because Respondent uses the resolving website to compete with Complainant or else to host links to services that compete with Complainant. Complainant has provided documentation of Respondent’s past and present use of the disputed domain name in Exhibit E, where Complainant urges Respondent has previously hosted links to competitors and currently offers the sale of competitive goods. Past panels have found that hosting links to competitive services does not constitute a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Past panels have also found competing use to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). As the Panel finds such use by Respondent, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(g) Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use because Respondent has used the resolving website to host malware. Complainant has provided evidence of this use in Exhibit E. Past panels have found that such use suffices to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See Hilton Hotels Corp. v. Padonack, FA 1043687 (Nat. Arb. Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Accordingly, the Panel finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Responded registered and uses the <kohlersinks.com> domain name for the purpose of disrupting Complainant’s business operations. Complainant argues that Respondent has used and continues to use the disputed domain name to host links to services that are competitors of Complainant or else to offer the sale of goods that are competitive with Complainant’s. Complainant has provided documentation of such use in Exhibit E. Past panels have found either use to constitute disruption under Policy ¶ 4(b)(iii), thereby showing bad faith use and registration. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)); 24554 (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). As the Panel finds either use by Respondent here, the Panel finds that Respondent registered and uses the <kohlersinks.com>domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <kohlersinks.com> domain name to confuse Internet users about the identity of Respondent. Complainant argues that Respondent has used and continues to use the disputed domain name to host links to services that are competitors of Complainant or else to offer the sale of goods that are competitive with Complainant’s. Complainant has provided documentation of such use in Exhibit E. Past panels have found either use to constitute bad faith in use and registration pursuant to 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); MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). As the Panel finds such behavior by Respondent here, the Panel finds that Respondent registered and uses the <kohlersinks.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant alleges that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the KOHLER mark. Complainant asserts that it has a “famous mark” due to its long history of use. Complainant argues that the combination of Respondent’s use of the resolving website and Complainant’s famous mark is enough to infer that Respondent had actual knowledge of Complainant’s rights in the KOHLER mark at the time of registration. Past panels have found that when respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). As the Panel finds that Respondent had actual knowledge of Complainant’s rights in the KOHLER mark at the time of registration, the Panel finds that Respondent registered the <kohlersinks.com> domain in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant also alleges that Respondent has used the disputed domain in bad faith because it has used the resolving website to download malware onto the computers of Internet users. Complainant has provided documentation of this in Exhibit E. Past panels have found that the use of a website to host malware demonstrates bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). As the Panel finds such use here, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <kohlersinks.com> domain name using the KOHLER mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlersinks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: July 2, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page