Kohler Co. v. Joseph Schwartz
Claim Number: FA1711001760491
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Joseph Schwartz (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.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.
Eduardo Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2017; the Forum received payment on November 29, 2017.
On November 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@kohlerwalkintubs.com, postmaster@kohlerwalkintub.com, postmaster@kohlerwalkinbathtub.com, postmaster@kohlerwalkinbathtubs.com, postmaster@kohlerwalkintubs.net, postmaster@kohlerwalkintub.net. Also on December 4, 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.
A timely Response was received and determined to be complete on December 26, 2017.
On December, 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Machado 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a manufacturing Company best known for its plumbing products, such as bath, kitchen and related home fixtures, that are sold throughout the world, including walk-in tubs. Complainant uses the mark KOHLER to identify their products since at least 1873.
Complainant has rights in the KOHLER mark pursuant to its trademark registration No 94,999, with the United States Patent and Trademark Office, registered on January 20, 1914, which predates Respondent’s registration of the <kohlerwalkintub.net > <kohlerwalkinbathtubs.com>, < kohlerwalkintubs.net>, <kohlerwalkinbathtub.com>, <kohlerwalkintub.com> and the < kohlerwalkintubs.com> domain names.
Complainant alleges that the domain names were registered in 2009 and 2011, well after Complainant began extensive marketing of its goods under its mark and the registration of its mark in U.S. as well as around the world.
Complainant argues that the domain names <kohlerwalkinbathtubs.com> and <kohlerwalkinbathtub.com> are used in conjunction with a passive holding page that states “website coming soon”, whilst the remaining domain names resolve to a page with a DNS error.
Complainant states that disputed domain names are nearly identical and confusingly similar to Complainant’s mark because they incorporate the registered mark and the generic top level domain (‘gTLD’) “.com.” or “.net.”, and this alterations do not sufficiently differentiate the disputed domain names from the KOHLER mark.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names because it has no trademark or other intellectual property rights in the disputed domain names and also affirms that it has not granted Respondent any license, permission or authorization by which Respondent could own or use the disputed domain names.
Complainant contends that there is no evidence that Respondent has ever been known as “kohler walk in tub” or has ever used any trademark or service mark similar to the disputed domain names.
Complainant asserts that has been no bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent uses two of the disputed domain names in conjunction with a passive holding page and the remaining disputed domain names resolve to a DNS error page.
Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith. Complainant states that Respondent had actual knowledge of Complainant’s mark and the fact that Respondent has registered domain names which incorporate the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. The registration of six domain names containing Complainant’s famous mark is evidence of bad faith registration and use, according to Complainant.
B. Respondent
Respondent alleges that the claim is unwarranted and erroneous and Complainant has not presented evidences that declares that the ownership of the disputed domain names is abusive or in bad faith.
Respondent states that the disputed domain names are for non-commercial critiquing purposes as a service to consumers.
Respondent affirms that there is no copyright or trademark infringement done in any of the content hosted on the websites.
Complainant is a manufacturing Company best known for its plumbing products, such as bath, kitchen and related home fixtures, that are sold throughout the world, including walk-in tubs. Complainant uses the mark KOHLER to identify their products since at least 1873.
Complainant has rights in the KOHLER mark pursuant to its trademark registration No 94,999, with the United States Patent and Trademark Office, registered on January 20, 1914, which predates the disputed domain names.
The disputed domain names do not resolve to any active website, and instead resolves to a DNS error page and passive holding page that states “Website
Coming Soon.”
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 this case, it is clear that Complainant has rights in the KOHLER mark pursuant to its trademark registration No 94,999 with the United States Patent and Trademark Office, registered on January, 20, 1914
The Panel agrees that registration with the USPTO suffices to demonstrate a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name takes the trademark and adds the word “walkinbathtub” and the gTLD “.com” and “.net”. Panel rules that the gTLD is of a non-distinctive nature (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Further, the word “walkinbathtub” is not the memorable component of the domain name, but rather, a non-distinctive addition.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It is well established that Complainant must only 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 (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 (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.”).
In the present case, the Panel finds that the Respondent is not a licensee of Complainant, nor is it commonly known by the disputed domain names. Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel notes that Respondent’s websites under the disputed domain names seem to currently resolve to inactive pages displaying the message “Website coming soon, Please check back soon to see if the site is available” or a DNS error page.
Considering the circumstances of the present case, the Panel concludes that the failure to make an active use of the disputed domain names that are confusingly similar to Complainant’s marks is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Hewlett-Packard Co. v. Shemesh, FA 434145 (Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Therefore, this Panel finds that Respondent has not demonstrated rights or legitimate interests in the <kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.net> domain names by not making any bona fide offering of goods or services (Policy ¶ 4(c)(i)) or any legitimate noncommercial or fair use (Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s <kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.net> domain names resolve to webpages indicating the site is under construction/error page.
Failure to make an active use of a domain name shows bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Respondent registered the <kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.net> domain names in bad faith as Respondent has a propensity for registering domain names confusingly similar to famous marks.
Respondent has not presented any plausible explanation for its use of Complainant’s mark. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
The Panel observes that the Respondent has not offered any explanation for having registered a domain name that is practically identical to the Complainant’s well-known mark.
For the reasons above, the Panel finds that Respondent has registered and is using the domain name <chevrolet2017.com> in bad faith, establishing 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 kohlerwalkintubs.com>, <kohlerwalkintub.com>, <kohlerwalkinbathtub.com>, <kohlerwalkinbathtubs.com>, <kohlerwalkintubs.net>, and <kohlerwalkintub.net> domain names be TRANSFERRED from Respondent to Complainant.
Eduardo Machado, Panelist
Dated: January, 8, 2018
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