Kohler Co. v. Albert Jackson
Claim Number: FA0508000545184
Complainant is Kohler Co. (“Complainant”), represented
by Paul D. McGrady, of Greenberg Traurig, LLP, 77 West Wacker
Drive, Suite 2500, Chicago, IL 60601.
Respondent is Albert Jackson (“Respondent”),
PO Box 2014, George Town, Grand Cayman, KY.
The
domain name at issue are <kohlertoilet.com>
and <kohlertoilets.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 23, 2005.
On
August 23, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the <kohlertoilet.com>
and < kohlertoilets.com>
domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and
that Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a Dotregistrar.com
has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
August 24, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 13, 2005 by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@kohlertoilet.com and postmaster@kohlertoilets.com
by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <kohlertoilet.com> and <kohlertoilets.com>
domain names are confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or
legitimate interests in the <kohlertoilet.com>
and <kohlertoilets.com>
domain names.
3. Respondent registered and used the <kohlertoilet.com> and <kohlertoilets.com> domain names
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Kohler Co., offers a wide variety of goods including plumbing and power systems
products, toilets, furniture and accessories, cabinetry and tile, engines and
generators, as well as resort, recreation, and real estate opportunities. Complainant operates forty-four
manufacturing plants, twenty-six subsidiaries and affiliates and dozens of
sales offices spread over every continent except Antarctica.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
(“USPTO”) for the KOHLER mark (e.g., Reg.
No. 94,999 issued January 20, 1914; Reg. No. 167,671 issued May 8, 1923; and
Reg. No. 577,392 issued July 14, 1953).
Respondent
registered the <kohlertoilet.com>
and <kohlertoilets.com> domain
names on January 27, 2004 Respondent’s
domain names resolves to websites featuring links to third-party commercial
websites that directly compete with Complainant’s business.
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."
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.”).
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.
Complainant
asserts that it has established rights in the KOHLER mark 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
establish Complainant's rights in the BLIZZARD mark.”); see also
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
Moreover, the <kohlertoilet.com> and <kohlertoilets.com> domain names
are confusingly similar to Complainant’s KOHLER mark because the domain names
incorporate Complainant’s mark in its entirety and merely add the descriptive
words “toilet” and “toilets” which is related to Complainant’s business. These changes are not enough to overcome the
confusingly similar aspects of Respondent’s domain names pursuant to 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); see also Am.
Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum
Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the
complainant’s entire mark and merely added the descriptive terms “traffic
school,” “defensive driving,” and “driver improvement” did not add any
distinctive features capable of overcoming a claim of confusing similarity).
Furthermore,
Respondent’s <kohlertoilet.com> and
<kohlertoilets.com> domain
names are confusingly similar to Complainant’s KOHLER mark because the domain
names incorporate Complainant’s mark in its entirety and deviate with the
addition of the generic top-level domain ‘.com.’ The addition of a generic top-level domain does not negate the
confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶
4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <kohlertoilet.com> and <kohlertoilets.com> domain
names. When a complainant establishes a
prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not commonly known by the <kohlertoilet.com>
and <kohlertoilets.com>
domain names. Thus, the Panel concludes
that Respondent has not established rights or legitimate interests in the
disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where respondent was not commonly known by the
mark and never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that respondent has no rights or legitimate interests in
domain names because it is not commonly known by complainant’s marks and
respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <kohlertoilet.com>
and <kohlertoilets.com>
domain names to operate a website featuring commercial links to various
third-party websites, through which Respondent presumably receives referral
fees. Thus, the Panel finds that
Respondent’s use of domain names that are confusingly similar to Complainant’s
mark to divert Internet users to third-party websites for Respondent’s own
commercial gain does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that respondent’s diversionary use of complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of complainant, was not a bona fide offering of goods or services); see also Yahoo! Inc. v. Web
Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the
respondent’s use of a confusingly similar domain name to operate a
pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or
services); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
commercial websites. Respondent
registered and used the disputed domain names in bad faith under Policy ¶
4(b)(iv) as Respondent is using the <kohlertoilet.com>
and <kohlertoilets.com>
domain names to intentionally attract, for commercial gain, Internet users to
its website, by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affiliation or endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb. Forum Jan. 8,
2003) (finding that the disputed domain name was registered and used in bad
faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using the complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Furthermore,
Respondent has used the <kohlertoilet.com>
and <kohlertoilets.com>
domain names, which contain Complainant’s KOHLER mark, to redirect Internet
users to a website featuring links to websites that sell goods and services that compete with
Complainant’s business. This suggests
that Respondent had actual knowledge of Complainant’s rights in the mark when
it registered the domain names and chose the disputed domain names based on the
goodwill Complainant has acquired in its KOHLER mark. Furthermore, Complainant’s registration of the KOHLER mark with
the USPTO bestows upon Respondent constructive notice of Complainant’s rights
in the mark. Respondent’s registration
of a domain name containing Complainant’s mark in spite of Respondent’s actual
or constructive knowledge of Complainant’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see
also 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”); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <kohlertoilet.com>
and <kohlertoilets.com>
domain names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
September 30, 2005
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