National Arbitration Forum

 

DECISION

 

Kohler Co. v. Milaca Lawn & Garden, LLC

Claim Number: FA0704000972339

 

PARTIES

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 Milaca Lawn & Garden, LLC (“Respondent”), 170 Central Ave. S., Milaca, MN 56353.

 

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <kohlerengineparts.net> and <kohlerparts.net>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 30, 2007.

 

On April 27, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <kohlerengineparts.net> and <kohlerparts.net> domain names are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 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@kohlerengineparts.net and postmaster@kohlerparts.net by e-mail.

 

A timely Response was received and determined to be complete on May 17, 2007.

 

A timely Additional Submission from Complainant was received on May 22, 2007 and determined to be complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.

 

On May 25, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         The disputed domain names are confusingly similar.  Complainant has a long existing registration of the key word “KOHLER,” which Respondent has used in its entirety adding only generic or descriptive terms to the disputed domain names.

 

            2.         Respondent has no rights or legitimate interests in the disputed domain names.  Respondent is not commonly known by the disputed domain names nor has it authorized Respondent to use them for commercial gain or otherwise.

 

            3.         Respondent registered and is using the disputed domain names in bad faith because they are used to promote both Complainant’s products and competing products to the detriment of the goodwill associated with Complainant’s famous mark.

 

B. Respondent

            1.         Respondent asserts that Complainant’s “trademarked logo” is not being used in the disputed domain names, and, thus, there is no confusing similarity.

 

            2.         Because Respondent is an authorized dealer for selling Complainant’s products, it has legal rights and a legitimate interest in the disputed domain names.

 

            3.         Respondent did not register the disputed domain names and is using them in good faith because Respondent is an authorized dealer of Complainant’s products.

 

C. Additional Submissions

            1.         Although Respondent may be an authorized dealer through the wholesale of Complainant’s product, Complainant did not authorize such use which can be used only with Complainant’s permission.

 

            2.         Such use (with competing products) by Respondent is evidence of bad faith registration and use.

 

DISCUSION AND FINDINGS

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;

(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.

 

Identical and/or Confusingly Similar

 

Complainant has registered with the United States Patent and Trademark Office and is using the KOHLER family name in its trademarks going back many years.  Of particular relevance here is the venerable U.S. Reg. No. 0590052 registered May 18, 1954 for the KOHLER mark covering “INTERNAL-COMBUSTION ENGINES FOR DRIVING GENERATORS AND FOR GENERAL POWER APPLICATION” and asserting a first use date of 1930.

 

The KOHLER name represents to the worldwide consuming public the goods and services offered by Complainant.  Complainant has made extensive use of the KOHLER name by providing engines and generators, plumbing, and other products that are marketed and sold around the world.  In addition, Complainant manufactures and distributes the finest furniture and accessories, cabinetry and tile.

 

The Panelist finds that the disputed domain names <kohlerparts.net> and <kohlerengineparts.net> are confusingly similar to the KOHLER mark because each domain name contains the mark in its entirety and merely adds a descriptive term or terms (“parts” or “engine” and “parts”, respectively) as well as the generic top-level domain “.net.”  The mere addition of a generic top-level domain and descriptive term or terms that have an obvious association with Complainant’s business do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/Bosth, D2001-2006 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not determine whether the domain name is identical or confusingly similar.

 

Complainant has met the first requirement of the Policy.

 

Rights or Legitimate Interests

 

Obviously, Respondent is not commonly known by the disputed domain names, and it is so found.

 

Thus, it is concluded that Respondent has no rights or legitimate interests in the <kohlerparts.net> and <kolerengineparts.net> domain names.  See 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

 

Respondent asserts that through its wholesaler it is an authorized dealer of Complainant’s products.  It does sell Complainant’s products, but also sells competitors’ products.

 

It is found, accordingly, that such of Complainant’s mark for Respondent’s own commercial gain does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Jaccard Corp. v. GDC, FA 152463 (Nat. Arb. Forum June 19, 2003) (stating that as there was “no evidence of an agreement between Complainant and Respondent whereby Respondent has either or both of a privilege to have registered, and a privilege to use, the mark that is the subject of one or more of Complainant’s trademarks as a domain name” the respondent had no rights or legitimate interests in the disputed domain name); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

In any event, although Respondent may be an authorized dealer of Complainant’s goods, Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) (“A licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself.”); see also Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (holding that, “without a specific agreement between the parties, the reseller does not have the right use the licensor’s trademark as a domain name”).

 

The second requirement of the Policy has been met.

 

Registration and Use in Bad Faith

 

It is found that the Respondent is using the disputed domain names to sell both Complainant’s products and directly competing products.  Accordingly, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain names and Complainant’s mark, and that Respondent is profiting from the goodwill associated with the KOHLER mark.  Further, Respondent has used Complainant’s mark without permission to bolster Respondent’s image.  Such use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Gorstew Ltd. v. Carribean Tours & Cruises, FA 94927 (Nat. Arb. Forum July 28, 2000) (finding that the respondent’s use of the disputed domain name to sell the services of the complainant or to attract customers to the complainant, presumably for which the respondents would be paid a fee, is classic trademark infringement, even if the result of same is that some revenue flows to the complainant, the owner of the marks).

 

There is a conflicting line of decisions based on Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) which applied a liberal test to determine whether or not a particular reseller under particular facts may have the right to retain a domain name.  In the application of the “Oki Data Factors,” the Panel in Whirlpool Props., Inc. & Whirlpool Corp. v. Ace Appliance Parts & Servs., FA 109386 (Nat. Arb. Forum May 24, 2002) ordered the transfer of the <whirlpoolparts.com> and <kitchenaidparts.com> domain names holding:

 

“But the true difficulty Respondent faces under the rationale of the Oki Data case is that Respondent sells parts for more than thirty companies who are direct competitors of the Complainant.  This is clearly displayed on Respondent’s web site where it is stated at the top of the web page ‘For All Brand Name Appliances.’  This does not constitute a bona fide offering of goods.  See Nikon, Inc. and Nikon Corporation v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that the use of Nikon-related domain names to sell Nikon and competitive cameras is not a legitimate use); see also Enzymatic Therapy, Inc. v. VNF Nutrition, D2001-1310 (WIPO Dec. 17, 2001) (holding that Respondent, as authorized distributor of Complainant’s goods, could not use Complainant’s registered trademark in a domain name over the objection of Complainant, even in the sale of Complainant’s goods); see also Easy Heat, Inc. v. Shelter Products, D2001-0344 (WIPO June 14, 2001) (“Most panels addressing this issue have found that a distributor does not have the unfettered right to register a domain name incorporating the trademark of the licensor”).  Respondent shows no other justification for using Complainant’s marks in domain names other than as a reseller of parts obtained from numerous suppliers or manufacturers, of which Complainant is just one of the number.  That relationship does not prove that Respondent has rights and legitimate interests in the disputed domain names.

 

Complainant prevails on this point.”

                 

Having read and considered the Oki decision, the Panelist thus believes nevertheless that the disputed domain names here involved do fall with in the Whirlpool ambit by virtue of Respondents sales of competing products.

 

The third requirement of the Policy has been met.

 

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 <kohlerengineparts.net> and <kohlerparts.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

JUDGE IRVING H. PERLUSS (RETIRED), Panelist
Dated: June 7, 2007

 

 

 

 

 

 

 

 

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