Kohler Co. v. Wesley Atkins a/k/a Default
Profile a/k/a N/A:2c67phrv
Claim Number: FA0607000760086
PARTIES
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady, of Greenberg Traurig, 77 West Wacker Drive, Suite 2500, Chicago, IL 60601. Respondent is Wesley Atkins a/k/a Default Profile a/k/a N/A:2c67phrv (“Respondent”), 9 The Pastures, Fields End, Hemel Hempstead, II HP1 2TN UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohlersinks.info>,
registered with Registerfly.com, Inc.
PANEL
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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 27, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 31, 2006.
On July 28, 2006, Registerfly.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <kohlersinks.info>
domain name is registered with Registerfly.com, Inc. and that the Respondent is
the current registrant of the name. Registerfly.com,
Inc. has verified that Respondent is bound by the Registerfly.com, 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 August 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 28, 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@kohlersinks.info by e-mail.
A timely Response was received and determined to be complete on August
18, 2006.
On August 24, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Kohler Co. contends that:
1.
The domain name <kohlersinks.info> which is registered in the name of the Respondent is
confusingly similar to the Complainant’s service mark, KOHLER, which was
registered with the United States Patent and Trademark Office (the USPTO) on
January 20, 1914 and numerous other KOHLER trademarks registered in the United
States and internationally.
2.
Respondent does not have any rights or legitimate interests in the <kohlersinks.info> domain name.
3.
Respondent registered and is using the domain name <kohlersinks.info> in bad faith.
4.
The domain name should be transferred from Respondent to Complainant.
B. Respondent
Respondent Wesley Atkins a/k/a/Default Profile
a/k/a N/A:2c67phrv maintains that he registers domain names by means of typing
keywords into a website search engine which produces the ten most used search
terms including the given keyword and then registering those expressions as
domain names. In the present case the
keyword used was ‘sinks’ and the expression ‘Kohler Sinks’ was one of the list
of search terms produced. However, the Respondent did not look for any trademark
rights there might be in this expression before he registered it as a domain
name. He recognizes now that this was
serious mistake for which he apologises and he suggests that the only fair
solution to the problem he created for the Complainant is for the domain name
to be transferred to the Complainant.
Finally, he says that he will cooperate to make sure that the matter is
resolved as soon as possible.
FINDINGS
The Complainant is a famous company that manufactures plumbing, power
systems, engines, generators, furniture and many other products throughout the
world. It has been in business since
1873. Its trademark is famous, having
been registered in 1914. It
manufactures sinks as well as a wide range of other goods and the brand name
‘Kohler Sinks’ is therefore well known.
The Respondent registers domain names and
attracts traffic to websites by acquiring popular search terms. He does this by typing keywords into a
search engine that produces frequently used search terms and then registering
them as domain names. One of the
combined expressions so produced was ‘Kohler Sinks.’ The Respondent registered the domain name <kohlersinks.info>
on April 28, 2006.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(2)
the 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.
It is clear, however, that this matter is a
request for a consent order. That is so
because the Complainant asks for an order that the contentious domain name be
transferred to it. The Respondent says
that he only registered the domain name as the result of producing a popular
search term that matched his keyword ‘sinks’ and that as the Complainant’s
trademark rights were thereby infringed, the domain name should be transferred
to the Complainant as soon as possible. S o the Respondent is also seeking an
order that the domain name be transferred to the Complainant.
It is open to the Panel when faced with such a
situation to forgo the usual UDRP analysis of the three issues set out above
and simply make an order for the transfer of the domain name to
Complainant. That course was followed
in Boehringer Ingelheim Int’l GmbH v.
modern Ltd-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003). It was also followed in PSC Mgmt. Ltd. Partnership v.
PSC Mgmt. Ltd. Partnership, FA
467747 (Nat. Arb. Forum June 6, 2005) and in Malev Hungarian Airlines,
Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In
this case, the parties have both asked for the domain name to be transferred to
the Complainant…Since the requests of the parties in this case are identical,
the panel has no scope to do anything other than to recognize the common request,
and it has no mandate to make findings of fact or of compliance (or not) with
the Policy.”). The same course was followed recently by the panel as presently
constituted in Norgren, Inc. v. Norgren,
Inc., FA 670051 (Nat. Arb. Forum May 23, 2006) and Diners
Club International Ltd. v. Nokta Internet Technologies FA 720824 (Nat.Arb Forum Aug. 2, 2006) and
also recently
in The Body Shop Int’l plc v. Agri,
Lacus, and Caelum LLC, FA 679564
(Nat. Arb. Forum May 25, 2006). The
Panel respectfully adopts the position as put forth in The Body Shop Int’l plc:
‘Consistent with a general legal principle governing arbitrations as
well as national court proceedings, this Panel holds that it cannot issue a
decision that would be either less than requested, or more than requested by
the parties. Because both Complainant and Respondent request the transfer
of the disputed domain name to Complainant, the Panel must recognize the common
request of the two parties.’
Indeed, it would be unwise to make any other
findings in case the same issues were to arise in later proceedings. Accordingly, the Panel will not make any
findings of fact or compliance or otherwise, but will make the only order that
is appropriate in the circumstances, which is an order for the transfer of the
domain name to Complainant.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlersinks.info>
domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 7, 2006
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