Kohler Co. v. Mike Kernea / Skyline
Claim Number: FA1501001601659
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Mike Kernea / Skyline (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kohler.parts>, registered with Go China Domains, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2015; the National Arbitration Forum received payment on January 26, 2015.
On January 26, 2015, Go China Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <kohler.parts> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC has verified that Respondent is bound by the Go China Domains, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kohler.parts. Also on January 27, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 17, 2015.
A timely Additional Submission was received from the Complainant on February 23, 2015 and determined to be complete and compliant.
The Respondent submitted an Additional Submission on March 3, 2015. This submission was received after the deadline for submissions and it was considered not to be compliant with the Supplemental Rules.
On February 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Repondent to Complainant.
A. Complainant
The Complainant alleges that it owns the registered trademark KOHLER, and that it has used that mark extensively to market engines and engine parts throughout North America. The mark was registered in 1954 and is well-known. The Complainant’s business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices spread over every continent but Antarctica. The disputed domain name was registered in 2014.
According to the Complainant, the Respondent has used the disputed domain in conjunction with a website which appears to advertise the Kohler engine brand for equipment and engine parts, including products that compete with the Complainant’s products, in a manner that trades on the Complainant’s goodwill and is likely to confuse users as to affiliation with the Complainant. The Complainant has not given any license, permission, or authorization by which the Respondent could make any use of any of its marks in a domain name.
The Complainant states that the disputed domain name is nearly identical and confusingly similar to Complainant’s marks because it fully incorporates and merely contains its mark. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name because he was not authorized to use the Complainant’s mark, he has never been commonly known as “kohler” or “kohler parts”, and he has never operated any bona fide or legitimate business under the disputed domain name. The Complainant cites UDRP precedents to support its position.
Further, says the Complainant, the Respondent is not making a protected non-commercial or fair use of the disputed domain name. The Respondent uses the disputed domain name to redirect to his website which includes offers related to the Complainant’s products and services as well as offers related to the products and services of the Complainant’s direct competitors. The Respondent’s use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith, in particular because the disputed domain name incorporates a long-standing trademark of a famous company, and it is being used to resolve to a web site that promotes products and services that compete directly with those of the Complainant. Thus the Respondent uses the disputed domain name to trade on the Complainant’s goodwill and to create consumer confusion. This constitutes bad faith registration and use under Policy ¶ 4(b)(iv). The Complainant cites UDRP precedents to support its position.
B. Respondent
The Respondent states that he has owned and operated an outdoor power equipment dealership and service center for over 20 years. His company has been engaged in the bona fide and legitimate sales, and repair of a wide variety of outdoore equipment, parts, and accessories, including a wide range of the Complainant’s branded products during that time. He currently maintains an active dealership contract with the Complainant, allowing him to obtain, market, and sell a complete line of the Complainant’s branded engines, parts, and accessories.
The Respondent alleges that he has been working continuously over the last 4 years to build and grow his company’s presence on the Internet. He registered the disputed domain name because almost all of his web-based business is from the sale of manufacturer OEM parts, so a domain name under the new gTLD “.parts” was attractive. This new domain name could allow him to expand his online business.
The Respondent states that he has not at any point in time before, or following the purchase of this domain offered it for sale or trade to any entity, nor does he have any plans to do so. Any domains purchased by the Respondent have always been obtained due to a legitimate business interest, and for his own private use.
The Respondent does not deny that there is similarity between the disputed domain name,and the Complainant’s mark.
The Respondent states that he entered into a contract with the Complainant agreeing to adequately market, and represent the Complainant’s product line. It is not possible that he effectively market, sell, and increase product exposure without using the products' trade name, and/or logos in some capacity. Given that the Respondent was never given clear guidelines on what is, and is not considered acceptable use of the Kohler mark, the Respondent was afforded discretion in judging that his actions in acquiring and maintaining the disputed domain name were done for the sole purpose of increasing his own authorized sales of the Complainant’s products. This use was equally beneficial to both the Complainant and the Respondent, working as an authorized dealer of the Complainant. All of the Complainant’s products and parts that were marketed and sold by the Complainant through the web site at the disputed domain name originated from the Complainant. It stands to reason that increasing sales on behalf of the Complainant, would increase the volume of products that he would need to acquire from it, thus furthering their brand, and increasing revenue for the Complainant.
According to the Respondent, his use of the disputed domain name does not create any consumer confusion, because he was acting in his capacity as an authorized dealer for the Complainant. He has used the Complainant’s trademarks for the purpose of advertising, for over 5 years, with full knowledge and under agreement with the Complainant. The Respondent’s use of the Complainant’s trademarks has always been for the purpose of marketing, and improving sales of the Complainant’s products within his dealership. The Complainant has never challenged this use of its mark. The website at the disputed domain name is operated as an online extension of the Respondent’s established physical dealership, therefore both are entitled to equal rights regarding usage of trademarks. To support his position, the Respondent cites Dead Sea Premier Cosmetics Laboratories Ltd. v. Maysan Jeuness GmbH / Gal Yana, D2013-2114 (WIPO Feb. 10, 2014) (Noting the admitted existence of a distributorship agreement between the Parties, the Panel found no indications why the Respondent should lack rights or legitimate interests, and should have registered and used the disputed domain name in bad faith.)
Further, says the Respondent, the fact that the website at the disputed domain name offers products and services that compete with those of the Complainant does not does not constitute an attempt to gain commercially from the Complainant’s trademarks. The Respondent can advertise the Complainant’s brand name within his dealership, as long as he maintains the Complainant’s Kohler authorization. There is no restriction preventing the Respondent from offering/advertising multiple-lines, as long as fair representation is given to each manufacturer.
The Respondent states that the disputed domain name was not registered or used in bad faith. In particular, the Respondent’s use of the disputed domain does not attempt to attract users to his site for commercial gain by creating a confusion as to the source, sponsorship, affiliation, or endorsement with the Complainant’s mark. The Respondent’s website clearly displays “Skyline Lawn & Garden” as the owner of that site. It is stated directly on the site that Skyline Lawn & Garden is an authorized dealer, and lays out the company’s physical location and contact information. The website at the disputed domain name does not make any claims nor contain any misleading information that would suggest that its affiliation with the Complainant is anything other than an independent authorized dealer.
The Respondent alleges that the Complainant’s specific line of products (engines) are not in direct competition with the other products offered at the website under the disputed domain name, because an engine is mere component of products such as lawnmowers. The Complainant’s relationship with equipment manufacturers is similar to that of supply partners, they cannot be considered direct competitors.
According to the Respondent, the only possible direct competition would result from the display of individual engines of various manufacturers. While the Respondent does list multiple engine lines within his site, they are offered primarily on an informative basis. Parts are the only product which can actually be purchased on the website, the actual sale of whole equipment can only be conducted through the Respondent’s physical store. To support his position, the Respondent cites Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin (WIPO Nov. 15,2012) (finding that a reseller redirecting to another site that lists competing products does not amount to bait or switch selling, when other products are not sold from the same pages (or directly under the disputed domain name) on which the complainants products are sold.).
The Respondent states that he has made no attempt to trade on the Complainant’s goodwill, nor has he attempted to confuse or mislead consumers through use of the Complainant’s mark. The Respondent’s attempts to sell the Complainant’s products in accordance with his contractual right to do so is a legitimate business usage of the disputed domain.
The Respondent requests the Panel to find that the Complainant has engaged in Reverse Domain Name Hijacking. For the reasons set forth below, the Panel will not summarize the Respondent’s arguments regarding Reverse Domain Name Hijacking.
C. Additional Submissions
Complainant
In its Additional Submission the Complainant notes that the Respondent does not contest that the disputed domain name is similar to the Complainant’s mark. The gravamen of Respondent’s arguments is that he claims rights in the disputed domain name because he is certified by the Complainant as an Expert Dealer. But this certification does not provide the Respondent a license to the Complainant’s mark that would allow him to register the disputed domain name, nor does this certification authorize his use of the disputed domain name to direct consumers to his website, which sells products made by Complainant’s competitors. The Complainant cites UDRP precedents to support its position.
According to the Complainant, the present case is distinguished from a case cited by the Respondent, Dead Sea Premier Cosmetics Laboratories Ltd. v. Maysan Jeuness GmbH / Gal Yana, Case No. D2013-2114 (WIPO Feb. 10, 2014), because in that case the Respondent was expressly authorized to use the Complainant’s mark.
The Complainant notes that the Respondent further argues that the Complainant did not provide the Respondent with guidelines on the proper use of its Mark. But this argument only further highlights that the Complainant never authorized any use or otherwise provided the Respondent permission to use its mark in a domain name and that the Respondent used the mark in a domain name without consent or direction from the Complainant. The Respondent’s argument, therefore, does not rebut the Complainant’s claim that the Respondent is not authorized to use the Complainant’s mark in a domain name. While the Respondent may under certain circumstances display advertisements with the Complainant’s mark in his physical store, that does not establish any rights or legitimate interests for use of the mark in a domain name used to direct customers to a website featuring the sale of competing products.
The Complainant cites Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001) and the WIPO Overview of WIPO Panel Views to support its position. In particular, the Respondent is using the disputed domain name to resolve to a web site that offers products that compete with those of the Complainant which is impermissible according to the cited precedents. The Complainant presents evidence to the effect that the website at the disputed domain name does offer competing products.
The Complainant states that the Respondent’s reliance on Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin / Domains By Proxy LLC, Case No. D2012-1874 (WIPO Nov. 15, 2012) is misplaced, because the use of the domain name in that matter is not at all analogous to the Respondent’s registration and use of the disputed domain name. That case involved a blog site run by a distributor of the complainant’s products, focusing solely on the complainant’s products but containing links to products on another website that advertised competitor brands. In the present case, the disputed domain name simply redirects to a strictly commercial website where the Respondent advertises his services and several competitor brands. Therefore, Lise Charmel Industrie is of no help to Respondent.
The Complainant cites Kohler Co. v. Phil Coons, FA0510000589518 (Nat. Arb. Forum Dec. 29, 2005): “[r]espect for the intellectual property rights of the Complainant outweighs the Respondent’s interest is using those rights to promote the Respondent’s ability to sell the Complainant’s products. By doing so, it trespasses on the Complainant’s right to control the use of its mark and confuses the marketplace.”
According to the Complainant, despite the Respondent’s affirmations to the contrary, the Respondent’s actual conduct of targeting customers who are searching for Kohler and parts and redirecting them to a website featuring competing products is “intentionally attempt[ing] to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”, in violation of Policy ¶ 4(b)(iv). The Complainant cites UDRP precedents to support its position.
The Complainant notes that the Respondent made the point that he is simply attempting to increase sales of the Complainant’s products through the disputed domain name and that is “directly beneficial to [Complainant].” In response, the Complainant cites Kohler Co. v. Phil Coons, FA0510000589518 (Nat. Arb. Forum Dec. 29, 2005): “[a]lthough it can be asserted that the Respondent’s use of the subject domain name benefits the Complainant, the Complainant is entitled to determine how its mark is to be used and who may use it.”
Finally, the Complainant denies that it attempted Reverse Domain Name Hijacking. For the reasons set forth below, the Panel will not summarize the Complainant’s arguments regarding Reverse Domain Name Hijacking.
Respondent
In his Additional Submission, the Respondent alleges that the Complainant has raised new arguments in its Additional Submission.
The Respondent reiterates that he does not dispute the similarity between the disputed domain name and the Complainant’s mark. He reiterates that the Respondent’s use of the disputed domain name to resolve to his web site is not likely to create consumer confusion. The Respondent maintains the other arguments presented in his Reply.
The Complainant owns the registered mark KOHLER, which is well-known.
The disputed domain name was registered well after the mark.
The Respondent is not known by the disputed domain name and has not been authorized by the Complainant to use its mark in a domain name.
The Respondent is an authorized dealer of the Complainant.
The Respondent is using the disputed domain name to resolve to a website that offers both the Complainant’s products, and products that compete with those of the Complainant.
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."
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.
Before considering the three elements of the Policy the Panel must consider whether to take into account the Respondent’s tardy Additional Submission. Pursuant to 10(b) of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Under the particular circumstances of this case, the Panel will take into account the Respondent’s Additional Submission.
The disputed domain name is clearly identical or confusingly similar to the Complainant’s registered trademark. The Respondent does not dispute the similarity but disputes that consumer confusion could arise. The test for similarity for this element of the Policy does not require evidence of actual consumer confusion. Rather, it is based on the textual similarity of the mark with the disputed domain name. Recent panels have considered new gTLDs, which may include descriptive attributes, to be relevant to the confusing similarity analysis and serve to increase likelihood of confusion. See, DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD “.menu”, the combination of the “dunkin” element with the “.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Thus, the Panel finds that the addition of “.parts” to the Complaint’s mark does not negate the confusing similarity of the disputed domain name to the Complainant’s mark.
The Panel finds that the Complainant has satisfied its burden of proof for this element of the policy.
The Respondent does not dispute that he not commonly known by the disputed domain name. He argues that, since he is a licensed dealer of the Complainant, he is authorized to use the Complainant’s mark to market the Complainant’s products, including by registering the disputed domain name.
The Panel does not agree. As pointed out by the Complainant, it never authorized the use of its mark in a domain name. Authorizing the use of its mark to market its products does not entail authorizing the use of the mark in a web site that is used to market products that compete with those of the Complainant. The Complainant has every right to control the use of its mark, and to restrict or prohibit its use in domain name.
The Panel finds that the Respondent’s use of the disputed domain name to sell both the Complainant’s and competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)).
It is not disputed that the Respondent is a licensed dealer of the Complainant. The guiding precedent in such situations is Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (an authorized dealer may use the complainant’s trademark if the respondent is 1) selling the products at issue; 2) selling only the complainant’s products; 3) accurately disclosing the relationship between the complainant and the respondent; and 4) has not attempted to register all domain names incorporating the complainant’s mark, thus preventing the complainant from reflecting its mark in a domain name). In the present case, it is not disputed that the Respondent is selling products other than the Complainant’s products. Thus the Respondent’s use of the Complainant’s mark is not permissible under the Policy. See also Carlon Meter Co. v. Jerman, D2002-0553 (WIPO July 30, 2002) (“Respondent may well be an important distributor of Complainant's products, but its right to use the trademarks of Complainant do not necessarily extend to a right to use the globally extensive domain name system by incorporating these trademarks in the Domain Names in a manner which links them to Respondent's web site.”).
The Respondent cites Dead Sea Premier Cosmetics Laboratories Ltd. v. Maysan Jeuness GmbH / Gal Yana, Case No. D2013-2114 (WIPO Feb. 10, 2014). But the facts in that case are very different from the facts in the present case. In that case, the website at the disputed domain name was used only to promote the Complainant’s products, the Complaint was filed on the basis that there was no distributorship agreement, and the Complainant attempted to withdraw the Complaint when the Respondent pointed out that he did have a distributorship agreement.
The Respondent cites Lise Charmel Industrie v. Laurela Inc., Alexander Kargin-Utkin / Domains By Proxy LLC, Case No. D2012-1874 (WIPO Nov. 15, 2012). But the facts in that case are very different from the facts in the present case. In that case, the disputed domain name was used to point to a blog site that contained links to the pages of the Respondent’s online web store that related to the Complainant’s products. The Panel found that “on balance the Respondent’s links from its promotional blog page to the relevant product pages of its on-line store does not amount to bait or switch selling, or to the Respondent attempting to divert Internet users contrary to the Complainant’s interests”. In the present case, the disputed domain name points to a web site that prominently features products that compete with those of the Complainant. This constitutes diversion of Internet users contrary to the Complainant’s interests.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Complainant claims that the Respondent is attempting to benefit commercially from a likelihood of confusion. Specifically, the Complainant argues that Internet users who view the disputed domain name’s resolving webpage will mistakenly believe that it is somehow affiliated with or sponsored by Complainant.
The Respondent himself states that he registered the disputed domain name to allow him to expand his online business. And he admits that he uses it to promote not just the Complainant’s products and services, but competing products and services, even if some of the competing products are not sold online but only at his physical store.
The Panel finds that Internet users are indeed likely to be confused, and that the Respondent is attempting to benefit commercially from this confusion. This constitutes bad faith bad faith under Policy ¶ 4(b)(iv). See 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); see also Kohler v. Milaca Lawn & Garden, LLC, FA0704000972339 (Nat. Arb. Forum June 7, 2007) (finding respondent’s use of the disputed domain name to sell both complainant’s products and directly competing products evidence of bad faith registration and use); 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)); Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that the Complainant has satisfied its burden of proof for this element of the Policy.
Since the Complainant prevails, it has not engaged in Reverse Domain Name Hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED and that the Complainant did not engage in Reverse Domain Name Hijacking.
Accordingly, it is Ordered that the <kohler.parts> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: March 3, 2015
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