Kohler Co. v. huang fengen
Claim Number: FA1512001652317
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is huang fengen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <annsacks.co>, registered with DYNADOT 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2015; the Forum received payment on December 15, 2015.
On December 15, 2015, DYNADOT LLC confirmed by e-mail to the Forum that the <annsacks.co> domain name is registered with DYNADOT LLC and that Respondent is the current registrant of the name. DYNADOT LLC has verified that Respondent is bound by the DYNADOT 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 December 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2016 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@annsacks.co. Also on December 16, 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 January 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 uses the ANN SACKS mark in connection with its goods and services in the bath fixture industry. Complainant has rights in the ANN SACKS mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,221,777, registered Mar. 27, 2007). Respondent’s <annsacks.co> domain name is confusingly similar to the ANN SACKS mark as it incorporates the mark entirely while eliminating spacing between the words of the mark and appending the country-code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the <annsacks.co> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent has not made any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has used the website in conjunction with pay-per-click advertisements that compete with Complainant, and has also offered to sell the disputed domain name.
Respondent has registered and used the disputed domain name in bad faith. Respondent’s offer for sale through the disputed domain is evidence of bad faith under Policy ¶ 4(b)(i). The inclusion of competing hyperlinks indicates an attempt to disrupt the business of Complainant according to Policy ¶ 4(b)(iii). Respondent presumably profits from the inclusion of the hyperlinks, which is evidence of bad faith under Policy ¶ 4(b)(iv). Respondent registered the disputed domain name with actual knowledge of the ANN SACKS mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., founded in 1873, is best known for its bath products around the world. Kohler’s subsidiary, Ann Sacks Tile & Stone, Inc. manufactures and supplies luxury tile, stone, and plumbing products.
Kohler uses the ANN SACKS mark in connection with its goods and services in the bath fixture industry. Complainant has rights in the ANN SACKS mark pursuant to its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,221,777, registered Mar. 27, 2007). Respondent’s <annsacks.co> domain name is confusingly similar to the ANN SACKS mark.
Respondent, huang fengen, registered the <annsacks.co> domain name on July 31, 2015. Respondent has used the website in conjunction with pay-per-click advertisements that compete with Complainant, and has also offered to sell the disputed domain name.
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(f), 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 has rights in the ANN SACKS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <annsacks.co> domain name is confusingly similar to the ANN SACKS mark as it incorporates the mark entirely while eliminating spacing between the words of the mark and appending the “.co” ccTLD.
Respondent has no rights or legitimate interest in the <annsacks.co> domain name. Complainant has not authorized Respondent to use the ANN SACKS mark. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name lists “huang fengen” as registrant. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent has not made any bona fide offering of goods or services or legitimate non-commercial or fair use of the <annsacks.co> domain name. Respondent has used the website in conjunction with pay-per-click advertisements that compete with Complainant. 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”).
In addition, Respondent’s general offer to sell the <annsacks.co> domain name shows a lack of rights or legitimate interests. See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Respondent registered and has used the <annsacks.co> domain name in bad faith. First, Respondent’s offer to sell the <annsacks.co> domain name shows that registration was made in bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Respondent’s use of the <annsacks.co> domain name with competing hyperlinks is a disruption of Complainant’s business, which is bad faith 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).
Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website, which is bad faith 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).
Respondent had actual knowledge of Complainant’s rights in the ANN SACKS mark when Respondent registered the <annsacks.co> domain name, which is evidence of bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <annsacks.co> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 21, 2016
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