Kohler Co. v. Shawn Longson / Benjamin Ryan Productions, LLC
Claim Number: FA1606001679939
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn LLP, Illinois, USA. Respondent is Shawn Longson / Benjamin Ryan Productions, LLC (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sterlingkitchenbathdistributors.com>, registered with Wild West Domains, 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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 20, 2016, Wild West Domains, LLC confirmed by e-mail to the Forum that the <sterlingkitchenbathdistributors.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@sterlingkitchenbathdistributors.com. Also on June 21, 2016, 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.
A timely Response was received and determined to be complete on June 24, 2016. Prior to his Response, Respondent also sent an e-mail to the Forum, on June 23, 2016.
On June 28, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus as Panelist.
On June 29, 2016, Complainant filed Additional Submissions, filed in a timely manner.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states to be a market leader in the bath and plumbing fixture industry. Complainants owns the US trademark STERLING No. 3,342,595, used in connection with a full-line brand which has a leader position in kitchen and bath design.
Complainant argues that the domain name is confusingly similar to its prior trademark since it fully incorporates the “STERLING” sign, which would be the dominant element in the disputed domain name.
Further, Complainant contends that Respondent has no right or legitimate interest in the disputed domain name. Complainant inter alia alleges that Respondent has no trademark right on the STERLING sign and that Complainant did not grant him any license, permission nor authorization to use the STERLING trademark in a domain name.
Complainant claims that the mere fact that Respondent has registered a domain name incorporating Complainant’s well-known trademark is alone sufficient to demonstrate registration and use in bad faith. Complainant also raises the fact that Respondent used the disputed domain name to advertise third parties’ products. It also states that the current passive holding can amount to a use in bad faith.
Thus, Complainant requests the transfer of the disputed domain name.
B. Respondent
Respondent claims that he has stopped using the disputed domain name as soon as Complainant requested him to do so. He alleges that he had the intention of transferring the disputed domain name but “simply forgot” about it.
He contends that he registered the domain name for one of his client who had several companies, including one named Sterling Floors. He also states that he set up the website for his client. This website incorporated the products he distributed, including Complainant’s goods.
Besides, prior to his Response, Respondent had sent an e-mail to the Forum, consenting to the transfer of the disputed domain name to Complainant.
C. Additional Submissions
Complainant filed additional submissions after Respondent’s Response. It states that Respondent agreed to the transfer of the domain name and that this element alone suffices to order a transfer. Besides, Complainant also added further arguments to its Complaint.
Complainant argues that although the disputed domain name is currently inactive, it used to resolve to a website where Complainant’s trade name KOHLER was reproduced in multiple locations. Complainant also highlights the fact the passive holding does not preclude a finding of use in bad faith.
Besides, Complainant claims that it was not under any duty to continually attempt correspondence with Respondent prior to initiating an UDRP complaint. Finally, it alleges that Respondent failed to rebut the arguments in the Complaint.
Considering that Respondent consents to transfer the disputed domain name, the Panel finds that Complainant is entitled to the requested transfer.
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 the present case, Respondent had explicitly accepted that the disputed domain name be transferred to Complainant.
As stated in the case BBY Solutions, Inc. v. Zip.ca / Curt Millar (Claim Number: FA1012001365325, Forum Feb. 7, 2011), where a respondent consents to transfer the disputed domain name, the panel may forego analyzing the elements set forth in the Policy and simply order a transfer of the domain name, except if the transfer is itself offered in bad faith.
Here, the Panel deems it appropriate to proceed as suggested by both parties, in the interest of efficiency and expedience. Hence, solely for purposes of the current proceeding and without further analysis of the specific requirements set forth in Paragraph 4(q) of the Policy, the Panel concludes that Complainant has proved these requirements.
Having established the elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sterlingkitchenbathdistributors.com> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: July 8, 2016
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