Kohler Co. v. Arnold Cohen c/o American Bidet Products
Claim Number: FA0602000637821
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 Arnold Cohen c/o American Bidet Products (“Respondent”), 1801 Polk Street, #2121, Hollywood, FL 33022-2121.
The domain names at issue are <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com>, registered with Names4Ever.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 1, 2006.
On February 1, 2006, Names4Ever confirmed by e-mail to the National Arbitration Forum that the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names are registered with Names4Ever and that Respondent is the current registrant of the names. Names4Ever has verified that Respondent is bound by the Names4Ever 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 February 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 2006 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@kohlerbidets.com, postmaster@kohleramericanbidet.com and postmaster@ kohleramericanbidets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James a. Crary 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 <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names are confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names.
3. Respondent registered and used the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., is a worldwide manufacturer and distributor of plumbing services, power systems, and household appliances and accessories. Complainant maintains a business presence on six continents through its forty-four manufacturing plants, twenty-six subsidiaries and affiliates, and dozens of sales offices.
Complainant holds numerous trademark registration rights to the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 94,999 issued on January 20, 1914, renewed on March 16, 2004; Reg. No. 167,671 issued on May 8, 1923, renewed on July 19, 2003; Reg. No. 577,392 issued on July 14, 1953, renewed on September 30, 2003; Reg. No. 590,052 issued on May 18, 1954, renewed on September 17, 2004; Reg. No. 2,382,736 issued on September 5, 2000; Reg. No. 2,766,196 issued on September 23, 2003).
Respondent registered the <kohlerbidets.com>,
<kohleramericanbidet.com>, and <kohleramericanbidets.com>
domain names on December 24, 2003.
Respondent has not yet made use of the disputed domain names for any
purpose.
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 has established rights in the KOHLER mark through registration of the mark with the USPTO. See 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.”); see also 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.”).
Respondent’s <kohlerbidets.com>, <kohleramericanbidet.com>
and <kohleramericanbidets.com> domain names are confusingly
similar to Complainant’s KOHLER mark pursuant to Policy ¶ 4(a)(i), because each
wholly incorporates the mark and merely adds on one or two generic words. Panels have held that the addition of
generic or geographic words to a complainant’s mark does not make the domain
name distinctive. See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10,
2000) (finding that the domain name registered by the respondent,
<jvc-america.com>, is substantially similar to, and nearly identical to
the complainant's JVC mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names. Complainant has the initial burden of proof in establishing that Respondent lacks rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <kohlerbidets.com>,
<kohleramericanbidet.com> and <kohleramericanbidets.com> domain
names. See Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June
20, 2000) (“By not submitting a response, Respondent has failed to invoke any
circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Respondent has registered the disputed domain names under the name “Arnold Cohen c/o American Bidet Products” and there is no other evidence in the record suggesting that Respondent is commonly known by the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, Respondent is not using the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names, which are confusingly similar to Complainant’s KOHLER mark, for any purpose and is therefore passively holding them. Panels have concluded that passively holding domain names does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is not using the <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names, which are confusingly similar to Complainant’s KOHLER mark, for any purpose. Therefore, Respondent is passively holding the disputed domain names, which constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <kohlerbidets.com>, <kohleramericanbidet.com> and <kohleramericanbidets.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: March 14, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum