Kohler Co. v. Ernesto Rodriguez / Power Mower Corp.
Claim Number: FA1602001659972
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, United States. Respondent is Ernesto Rodriguez / Power Mower Corp. (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohlerenginekits.com> and <kohlerenginemaintenance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she 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 Forum electronically February 8, 2016; the Forum received payment February 9, 2016.
On February 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kohlerenginekits.com> and <kohlerenginemaintenance.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 29, 2016, 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@kohlerenginekits.com, postmaster@kohlerenginemaintenance.com. Also on February 9, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
Complainant ‘s Contentions in this Proceeding:
Complainant is a market leader in the power-generation industry. Complainant’s worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices spread over every continent but Antarctica. Complainant registered the KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 590,052, registered May 18, 1954), which demonstrates Complainant’s rights in its mark. Attached Exhibit C contains a copy of Complainant’s USPTO registration. The <kohlerenginekits.com> and <kohlerenginemaintenance.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate the KOHLER mark and merely add the generic terms “engine,” “kits,” and “maintenance,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. First, Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain names or a legitimate noncommercial or fair use. Rather, Respondent uses its <kohlerenginekits.com> domain to sell products that are in direct competition with Complainant’s business, and has failed to make any active use of the <kohlerenginemaintenance.com> domain. Attached Exhibit E contains screenshots of Respondent’s resolving websites.
Respondent registered and is using or passively holding the disputed domain names in bad faith. First, Respondent’s use of the <kohlerenginekits.com> domain to sell products that are in direct competition with Complainant’s business disrupts and competes with Complainant, a violation of Policy ¶ 4(b)(iii). Second, Respondent uses the <kohlerenginekits.com> domain to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of the Respondent’s website. Third, Respondent failed to make any active use of the <kohlerenginemaintenance.com> domain and passively holds it, which supports findings of bad faith. Fourth, Respondent registered the domains with actual knowledge of Complainant’s mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain names on March 11, 2013.
Complainant established rights and legitimate interests in the mark contained in its entirety within the disputed domain names.
Respondent has no such rights or legitimate interests in the mark or the domain names.
The disputed domain names are confusingly similar to Complainant’s protected
mark.
Respondent registered and used one of the domain names and held the other passively, both of which support findings of bad faith registration and use.
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 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.
Given 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(f), 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.”).
Identical or Confusingly Similar:
Complainant is a market leader in the power-generation industry. Complainant’s worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices spread over every continent but Antarctica. Complainant registered the KOHLER mark with the USPTO (Reg. No. 590,052, registered May 18, 1954), and Complainant this trademark registration demonstrates Complainant’s rights in its mark. Attached Exhibit C contains a copy of Complainant’s USPTO registration. The Panel finds that trademark registrations with the USPTO demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds that Complainant demonstrated rights in its mark pursuant to Policy ¶ 4(a)(i).
The <kohlerenginekits.com> and <kohlerenginemaintenance.com> domains are confusingly similar to Complainant’s mark as they wholly incorporate the KOHLER mark and merely add the generic terms “engine,” “kits,” and “maintenance,” and the generic top-level domain (“gTLD”) “.com.” Addition of a generic term to a complainant’s mark does not adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Previous panels have also found that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). As such, the Panel finds that Respondent’s domains are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that Respondent is not commonly known by the disputed domain names or any variant of Complainant’s mark. Further, Complainant argues that Complainant has not given Respondent license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information lists “Ernesto Rodriguez / Power Mower Corp.” as registrant, failing to show any similarity to Complainant or its protected mark. Respondent failed to provide any evidence for the Panel’s consideration. Attached Annex C contains additional WHOIS information. As such, the Panel finds no basis in the available record to make a finding that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii) and Respondent is not commonly known by Complainant’s protected mark. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its <kohlerenginekits.com> domain to sell products that are in direct competition with Complainant’s business, and Respondent failed to make any active use of the <kohlerenginemaintenance.com> domain. Attached Exhibit E contains screenshots of Respondent’s resolving websites. Previous panels have decided that a respondent’s use of a domain to sell products and/or services that directly compete with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).”). Previous panels have also found that a respondent lacks rights and legitimate interests where it fails to make any active use of a domain. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark 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 of the domain name pursuant to Policy ¶ 4(c)(iii).”). For these reasons, the Panel finds that Respondent is not using the domains in connection with a bona fide offering of goods or services or a legitimate noncommercial and is not making a fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent’s use of the <kohlerenginekits.com> domain to sell products that are in direct competition with Complainant’s business disrupts and competes with Complainant, a violation of Policy ¶ 4(b)(iii). A respondent’s use of a domain name to promote products and/or services that compete directly with a complainant’s business constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Accordingly, the Panel finds that Respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent uses the <kohlerenginekits.com> domain to intentionally attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source of the Respondent’s website. Past panels have decided that a respondent demonstrates bad faith registration and use where it uses a domain for the purpose of selling products and services that compete with a complainant’s business. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent failed to make any active use of the <kohlerenginemaintenance.com> domain. Previous panels have agreed that a respondent’s failure to make any active use of a domain violates Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). As such, the Panel finds that Respondent’s behavior is sufficient evidence to show bad faith registration and use.
Finally, Complainant argues that Respondent registered the domains with actual knowledge of Complainant’s mark. In so arguing, Complainant asserts that because of the fame of the KOHLER mark, it is inconceivable that Respondent was unaware of Complainant’s mark at the time the domains were registered. Previous panels have decided that a respondent demonstrates bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent was well aware of the complainant’s mark at the time the disputed domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, based on the similarity of the domain names to the mark and based on the use and passive holding, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <kohlerenginekits.com> and <kohlerenginemaintenance.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 18, 2016.
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