Kohler Co. v. Universal Banner
Claim Number: FA0509000569059
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 Universal Banner (“Respondent”), 7095 Hollywood Blvd. #772, Los Angeles, CA 90046.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kohlerdeals.com>, registered with Go Daddy Software, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 30, 2005.
On September 30, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlerdeals.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 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@kohlerdeals.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions, among others:
Complainant, Kohler Co., manufactures and distributes fine furniture and accessories, cabinetry and tiles, engines and generators, as well as maintaining resorts, recreation, and real estate properties.
Complainant has registered the KOHLER mark with the United States Patent and Trademark Office in connection with these goods and services.
Respondent registered the <kohlerdeals.com> domain name on February 10, 2004.
Respondent’s domain name resolves to a website that allows Internet users to purchase various goods, some of which compete with Complainant’s products.
Respondent’s <kohlerdeals.com> domain name is confusingly similar to Complainant’s KOHLER mark.
Respondent does not have any rights or legitimate interests in respect of the <kohlerdeals.com> domain name.
Respondent has registered and is using the <kohlerdeals.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Respondent having defaulted, leaving Complainant’s allegations uncontested, the panel makes the following findings on the basis of the evidence admitted in the record:
1. Respondent’s <kohlerdeals.com> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in respect of the <kohlerdeals.com> domain name.
3. Respondent has registered and is using the <kohlerdeals.com> domain name in bad faith.
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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
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 has established its rights in the KOHLER mark due to the mark’s registration with the United States Patent and Trademark Office. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003).
Complainant contends, and Respondent does not dispute, that Respondent’s <kohlerdeals.com> domain name is confusingly similar to Complainant’s registered mark. Respondent’s domain name includes Complainant’s entire KOHLER mark and adds the generic term “deals.” Other panels have many times held that the addition to a mark of a generic term fails to properly distinguish the resulting domain name from the mark. We agree. The Panel therefore finds that Respondent’s <kohlerdeals.com> domain name is confusingly similar to Complainant’s KOHLER mark under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000).
The Panel thus finds that the requirements of Policy ¶
4(a)(i) have been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <kohlerdeals.com> domain name. Once Complainant makes a prima facie showing in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel is thus entitled to and does infer from the fact of Respondent’s default in this proceeding that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent’s <kohlerdeals.com> domain name
resolves to a website that allows Internet users to purchase various goods,
some of which compete with Complainant’s products, for Respondent’s commercial
gain. Respondent having offered no
proof to the contrary, the Panel finds that such use is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003); see also Glaxo
Group Ltd. v. WWW Zban, FA 203164
(Nat. Arb. Forum Dec. 1, 2003).
Furthermore, Respondent has failed to produce evidence showing that it is either commonly known by the disputed domain name or authorized to register domain names featuring Complainant’s mark. From this failure, the Panel infers that Respondent has no rights or legitimate interests in respect of the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent is using the <kohlerdeals.com> domain
name, which is confusingly similar to Complainant’s mark, to operate a website
that offers Internet users various consumer goods. Panels have held that such use is likely to cause confusion as to
Complainant’s sponsorship of or affiliation with the resultant website. The Panel therefore finds that Respondent’s
conduct constitutes bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001); see also Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003).
Moreover, Complainant contends, and Respondent does not
dispute, that Respondent registered the <kohlerdeals.com> domain
name with actual or constructive knowledge of Complainant’s rights in the
KOHLER mark by virtue of Complainant’s registration of the mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite actual or
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct.
4, 2002).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having found all three elements required to be shown under the ICANN Policy, the Panel concludes that the relief requested shall be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <kohlerdeals.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 10, 2005
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