Kohler Co. v. Lepanto
Claim Number: FA0704000971097
Complainant is Kohler Co. (“Complainant”), represented by Paul
D. McGrady, Jr., of Greenberg Traurig,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <canaccabinets.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 26, 2007.
On April 30, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <canaccabinets.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 April 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 2007 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@canaccabinets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is a manufacturer
and seller of cabinetry-related goods and services throughout the world.
Complainant has used its
CANAC mark in the
Respondent is not licensed or otherwise
authorized to use Complainant’s CANAC mark.
Respondent registered the <canaccabinets.com> domain name on November 8, 2005.
Respondent’s domain name resolves to a website that displays hyperlinks to third-party websites in direct competition with the business of Complainant.
Respondent’s domain name is confusingly similar to Complainant’s CANAC mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the <canaccabinets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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) (holding that a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Registration of a mark with a pertinent governmental
authority establishes Complainant’s asserted rights in its mark under Policy ¶
4(a)(i).
Accordingly, Complainant’s USPTO registration for the CANAC mark
sufficiently demonstrates Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson,
FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark
registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA]
mark pursuant to Policy ¶ 4(a)(i).” See also Enter.
Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr.
14, 2006) (finding that a complainant’s registration of the
Respondent’s <canaccabinets.com> domain name contains Complainant’s CANAC mark in its entirety and merely adds the generic term “cabinets,” which describes Complainant’s business, as well as the generic top-level domain (“gTLD”) “.com.” These slight changes do not save Respondent’s domain name from a finding of confusing similarity with respect to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007): “The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).” See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described a complainant’s financial services business, as well as a gTLD did not sufficiently distinguish a respondent’s domain name from that complainant’s mark under Policy ¶ 4(a)(i)).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <canaccabinets.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it nonetheless has rights or legitimate interests in its domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant has asserted that a respondent does not have rights or legitimate interests with respect to a domain name, it is incumbent on that 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 appropriate circumstances, the assertion by a complainant that a respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists). Because Respondent has not responded to the Complaint, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
In this connection, we first note that Complainant alleges,
and Respondent does not deny, that Respondent is not licensed or authorized to
use Complainant’s CANAC mark. Moreover,
the WHOIS information identifies Respondent as “Lepanto,”
and we find no other evidence in the record indicating that Respondent is
commonly known by the disputed domain name.
Therefore, we conclude that Respondent is not commonly known by the <canaccabinets.com> domain name within
the meaning of Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that a respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
We next observe that there is no dispute that Respondent’s <canaccabinets.com> domain name
resolves to a website that displays hyperlinks to third-party websites in
direct competition with the business of Complainant. Such use does not constitute 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 Am. Int’l Group, Inc. v.
Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that a
respondent’s use of a confusingly similar domain name to advertise real estate
services which competed with a complainant’s business did not constitute 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2004): “Respondent’s appropriation of the SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <canaccabinets.com> domain name, which is confusingly similar to Complainant’s CANAC mark, is likely to cause confusion among customers searching for Complainant’s cabinetry-related goods and services. Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the competing goods and services advertised by the links on Respondent’s website. Respondent presumably receives click-through fees for each misdirected Internet user, and is therefore attempting to benefit commercially from this likelihood of confusion. Therefore, we conclude that Respondent’s registration and use of the domain name <canaccabinets.com> constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007): “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.” See also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that a complainant is the source of or is sponsoring the services offered at the site).
In addition, it appears that Respondent registered the <canaccabinets.com> domain name with at least constructive knowledge of
Complainant’s rights in the CANAC trademark
by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
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).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <canaccabinets.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 5, 2007
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