Kohler Co. v TOSHIHIRO MAEDA
Claim Number: FA1710001756061
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is TOSHIHIRO MAEDA (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mykohlergenerator.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2017; the Forum received payment on October 27, 2017.
On October 29, 2017, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <mykohlergenerator.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2017 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@mykohlergenerator.com. Also on November 8, 2017, 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 November 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 is a global retailer and manufacturer of bath products and designs. Complainant uses the KOHLER mark in conjunction with its business practices. Complainant registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 590,052, registered May 18, 1954). See Compl. Amend. Annex 3. Additionally, Complainant registered the KOHLER mark with the Japan Patent Office (“JPO”) (Reg. No. 165,371, registered Jan. 22, 1925). Id. Respondent’s <mykohlergenerator.com> is confusingly similar to Complainant’s KOHLER mark because it incorporates the mark in its entirety, adding the generic terms “my” and “generator,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <mykohlergenerator.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the KOHLER mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <mykohlergenerator.com> resolves to a website promoting third party goods and services unrelated to Complainant’s business. See Compl. Amend. Annex 5.
Respondent registered and is using <mykohlergenerator.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website, presumably for commercial gain. Respondent’s <mykohlergenerator.com> promotes goods and services unrelated to Complainant’s business, thereby creating confusion among internet users as to the source or affiliation of the disputed domain name. Respondent registered <mykohlergenerator.com> with actual knowledge of Complainant and its rights to the KOHLER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <mykohlergenerator.com> on April 11, 2016.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
The Panel further finds that this proceeding shall continue in English. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 (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 the disputed domain name, <mykohlergenerator.com>, is confusingly similar to Complainant’s valid and subsisting trademark, KOHLER. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the dispute domain name by merely taking the trademark in its entirety and adding the generic words “my” and “generator” without spaces and the g TLD “.com.” This is insufficient to distinguish the dispute domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no authority, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <mykohlergenerator.com> resolves to a website promoting third party goods and services unrelated to Complainant’s business. See Compl. Amend. Annex 5.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant asserts that the disputed domain name attracts internet users to Respondent’s website, presumably for commercial gain. Specifically, Complainant shows that Respondent’s <mykohlergenerator.com> promotes goods and services unrelated to Complainant’s business, thereby creating confusion among internet users as to the source or affiliation of the disputed domain name. See Compl. Amend. Annex 5. Appropriating a complainant’s well-known mark for use in a domain name unrelated to complainant’s business evinces bad faith. Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
As such, the Panel finds that Respondent registered and is using <mykohlergenerator.com> in bad faith under the Policy.
Respondent appears to have registered <mykohlergenerator.com> with actual knowledge of Complainant and its rights to the KOHLER mark. Given the fame of the Complainant’s mark, the obvious Internet traffic redirection that results from the use of the disputed domain name and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s trademark and its rights therein.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <mykohlergenerator.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 1, 2017
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