Kohler Co. v. Gerald Hertsch
Claim Number: FA0610000825627
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 Gerald Hertsch (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kohler-standby.com> and <kohler-rv.com>, registered with Namesbeyond.Com Dba Goodluckdomain.Com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 23, 2006; the National Arbitration Forum received a hard copy of the Complaint October 23, 2006.
The National Arbitration Forum is unable to verify registration of Respondent’s disputed domain names with Namesbeyond.Com Dba Goodluckdomain.Com. In accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") ¶ 2, the National Arbitration Forum proceeded with processing the Complaint, relying on the WHOIS information available on the Registrar’s website.
On November 16, 2006, the Forum transmitted a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 6, 2006, by which Respondent could file a response to the Complaint, 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@kohler-standby.com and postmaster@kohler-rv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain names that Respondent registered, <kohler-standby.com> and <kohler-rv.com>, are confusingly similar to Complainant’s KOHLER mark.
2. Respondent has no rights to or legitimate interests in the <kohler-standby.com> and <kohler-rv.com> domain names.
3. Respondent registered and used the <kohler-standby.com> and <kohler-rv.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kohler Co., is recognized worldwide as a provider of engines, plumbing and other products. In connection with the provision of these products and services, Complainant registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the KOHLER mark (Reg. No. 590,052 issued May 18, 1954).
Respondent registered the <kohler-standby.com> and <kohler-rv.com> domain names March 28, 2005. The disputed domain names resolve to a website that offers competing products.
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 will draw such inferences as the Panel 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 Complainant to 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 rights in the KOHLER mark through registration with the USPTO. The Panel finds that Complainant’s registration and extensive use of the KOHLER mark for over fifty years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant maintains that Respondent’s <kohler-standby.com> and <kohler-rv.com> domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names feature Complainant’s entire KOHLER mark and add the generic terms “standby” and “rv” as well as a hyphen. The Panel finds that addition of generic terms and a hyphen to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark in accordance with Policy ¶ 4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established by extrinsic evidence in this proceeding that it has protected rights in the mark contained in its entirety within the disputed domain name. Complainant contends that Respondent lacks such rights to or legitimate interests in the <kohler-standby.com> and <kohler-rv.com> domain names. Where Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to bring forth substantial evidence indicating that it possesses rights or legitimate interests in the disputed domain names. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); 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 complainant that 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 is using the disputed domain names to resolve to
a website that features products that attempt to compete with Complainant’s
business. The Panel finds that
Respondent’s use is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also Or. State Bar v. A
Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
Also, Complainant asserts that Respondent is not known commonly by the <kohler-standby.com> and <kohler-rv.com> domain names and is not authorized by Complainant to register domain names featuring Complainant’s KOHLER mark in any way. Given the lack of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering and using domain names that contain Complainant’s protected mark. Respondent is using the <kohler-standby.com> and <kohler-rv.com> domain names to operate a website that features products that attempt to compete with Complainant’s business. The Panel finds that Respondent’s use constitutes disruption of Complainant’s business and evinces bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Additionally, Respondent’s use will likely cause confusion among Internet users as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use in accordance with Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohler-standby.com> and <kohler-rv.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 27, 2006.
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