Kohler Co. v. World Wide Plumbing Supply, Inc.
Claim Number: FA0603000654450
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 World Wide Plumbing Supply, Inc. (“Respondent”), 4002 15th Avenue, Brooklyn, NY 11218.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <kohlershowroom.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 8, 2006.
On March 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlershowroom.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 March 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 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@kohlershowroom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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:
1. Respondent’s <kohlershowroom.com> domain name is confusingly similar to Complainant’s KOHLER mark.
2. Respondent does not have any rights or legitimate interests in the <kohlershowroom.com> domain name.
3. Respondent registered and used the <kohlershowroom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Inc., manufactures, distributes, and markets furniture and accessories, cabinetry and tile, engines and generators, and also maintains resorts, recreation, and real estate opportunities. In connection with the provision of these goods and services, Complainant has registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 94,999 issued January 20, 1914).
Respondent registered the <kohlershowroom.com> domain name on February 4, 2006. Respondent’s domain name resolves to a website featuring links to various competing and non-competing commercial websites.
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. 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).
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 with the USPTO. Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning”); 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.”).
Complainant contends that Respondent’s <kohlershowroom.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name features Complainant’s entire KOHLER mark and adds the generic term “showroom.” The Panel finds that the addition of this generic term to an otherwise identical mark fails to distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). 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 L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <kohlershowroom.com> domain
name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show otherwise. 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 name. G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding
that, where the complainant has asserted that respondent does not have rights
or legitimate interests with respect to the domain name, it is incumbent on
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 a right or
legitimate interest does exist).
Complainant contends that Respondent is using the
confusingly similar <kohlershowroom.com> domain name to operate a
website that features links to various competing and non-competing commercial
websites from which Respondent presumably receives referral fees. The Panel finds that such use for
Respondent’s own commercial gain is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial
or fair use pursuant to Policy ¶ 4(c)(iii).
Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's
use of a domain name confusingly similar to Complainant’s mark to divert
Internet users to websites unrelated to Complainant's business does not
represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
Finally, Complainant contends that Respondent is neither commonly known by the <kohlershowroom.com> domain name nor licensed to register names featuring Complainant’s mark. Having filed no response, Respondent must acknowledge that it is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, the Panel finds that Respondent’s use of the
disputed domain name for the purpose of redirecting Internet users to websites
from which Respondent presumably receives referral fees is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”). Furthermore, it is likely that
Internet users will become confused as to Complainant’s sponsorship of or
affiliation with the resulting website.
The Panel finds this too to be evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”).
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 <kohlershowroom.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 19, 2006
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