Kohler Co. v. kang xiaoping
Claim Number: FA1701001713379
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is kang xiaoping (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <designforkohler.com>, registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2017; the Forum received payment on January 20, 2017.
After numerous requests, the Registrar, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn, has not confirmed to the Forum that the <designforkohler.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On January 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 2017 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@designforkohler.com. Also on January 27, 2017, 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 February 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. 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.
Language of the Proceedings
After several attempts to secure verification from registrar Beijing Innovative Linkage Technology Ltd. dba dns.com.cn pursuant to UDRP Rule 2, Forum commenced the proceedings despite the registrar’s failure to submit a timely verification. Forum reported registrar Beijing Innovative Linkage Technology Ltd. dba dns.com.cn’s noncompliance to ICANN on January 26, 2017. UDRP Rule 11(a) says the language of the administrative proceeding shall be the language of the Registration Agreement “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Rule 10(b) says “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Further, Rule 10(c) says the Panel “shall ensure that the administrative proceeding takes place with due expedition.” There is no way for Complainant (or the Panel) to know the language of the registration agreement. The domain name at issue primarily consists of English words. Respondent did not respond in any fashion. Requiring Complainant to submit a complaint in another language unfairly prejudices Complainant at this stage and unreasonably extends these proceedings because the registrar failed to provide registrant information. The Proceedings will take place in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered trademarks certificates for KOHLER, U.S. Trademark Registration No. 577,392, covering “plumbing fittings-namely, bath and shower fittings, bath fittings and valves, bath drains, showers, mixing valves, shower heads, combination lavatory fittings and faucets, drinking fountain fittings, supply pipes, sink, lavatory and urinal strainers, traps and continuous drains, flush pipes, closet and urinal fittings, bidet fittings, sink faucets, laundry tray faucets, lawn faucets, and bath and shower accessories consisting of soap dishes, robe hooks, towel bars, and wall grip rails” (registered July 14, 1953); KOHLER, U.S. Trademark Registration No. 3,744,769, covering”[i]nterior design services”, and KOHLER, China Trademark Registration No. 142,982 for “For water and sanitary equipment and equipment and components, fitting; bathroom supplementary installation; hygienic chinaware” (registered December 25, 1980) (the “KOHLER Marks”).
The KOHLER Marks represents to the worldwide consuming public the goods and services offered by Complainant. Complainant has made extensive use of the KOHLER Marks by providing a variety of home and bathroom products and fixtures, and design services in connection therewith, throughout the world. Due to the extensive use and registration of the KOHLER family of marks around the world, the KOHLER trademarks have become famous under the laws of the United States and countries around the world. Further, the KOHLER Marks has also obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.
Based on the WHOIS Record, Respondent first registered the Offending Domain on March 14, 2016 – well after Kohler’s use of the KOHLER Marks throughout the world, including in China, where Respondent resides.
LANGUAGE OF THE PROCEEDINGS
Complainant requests that this proceeding be conducted in English. ICANN Policy 11(a) provides that the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. In the event that the relevant Registration agreement for Respondent’s domain name <designforkohler.com> is in Chinese, Complainant argues that Respondent is fully capable of proceeding in English, and translation of the Complaint would only unduly burden the Complainant and unnecessarily delay this proceeding
First, Respondent has registered the Offending Domain which contains terms from the English language, including “design” and “for”. Respondent’s registration of a domain name containing English terms demonstrates Respondent’s understanding of the English language. See e.g., OpenTable, Inc. v. lin yanxiao / linyanxiao, FA1509001639274 (Forum Nov. 5, 2015) (finding that proceeding in English was the most just and expeditious way to proceed where, among other things, Respondent’s domain name consisted of an English language mark).
Finally, requiring Complainant to translate the Complaint into Chinese would cause unnecessary delay in contravention to ICANN Rule 10(c), which requires that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition.” See e.g., OpenTable, Inc. v. lin yanxiao / linyanxiao, FA1509001639274 (Forum Nov. 5, 2015) (stating that the Panel must ensure that the parties in an administrative proceeding are treated equally and fairly and the proceedings take place expeditiously).
The foregoing clearly demonstrates that Respondent is capable of proceeding, and these proceedings should continue, in English.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (ICANN Rule 3(b)(ix)):
a. Complainant and Its Mark.
Kohler, founded in 1873, is a market leader in the home and bath fixture industry, including related product design and interior design services Complainant’s ideas, craftsmanship, and technology lead the industry in product design. The beginnings of Kohler’s bathroom fixtures and plumbing products, can be traced back to 1926. Within its global distribution network, Complainant’s products are knit together by a superior level of quality and unique design over a broad range of price points. Working on the frontier of several industries, including category changing innovative plumbing designs, Complainant continues to establish new levels of excellence while maintaining its position of industry leadership to best fulfill its mission of improving the quality of life for each person who is touched by its products and services. Complainant’s worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices spread over every continent but Antarctica.
b. Respondent and Its Actions
1. Based on the WHOIS Record, Respondent came to be listed as the registrant for the Offending Domain on March 14, 2016, with full knowledge of Complainant’s famous KOHLER Marks and with the intent to profit from using Complainant’s trademarks.
2. Respondent has used the Offending Domain in conjunction with a website that appears to collect consumer information in the form of an account log in and/or registration page, and is likely to disrupt Complainant’s business.
3. Complainant has not given any license, permission, or authorization by which Respondent could make any use of any of its marks.
c. The Offending Domain is nearly identical and confusingly similar to the KOHLER Marks. (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).)
The Offending Domain is nearly identical and confusingly similar to Complainant’s marks because it fully incorporates the KOHLER mark and the KOHLER mark is the dominant element in the Offending Domain. See Federated Western Prop., Inc. v. Chan, D2003-0472 (WIPO Sept. 17, 2003) (finding disputed domain names “macysflowerclub.com” and “macysvisa.com” confusingly similar to the complainant’s trademark in MACY’S, even where the complainant was not found to have rights in the terms “flower club” or “Visa”); Citigroup Inc. v. Acme Mail, FA 0402000241987 (Forum Apr. 12, 2004) (finding the domain name “citiban.com” confusingly similar to the complainant’s CITI mark because the “domain name incorporates in its entirety Complainant’s CITI mark and the CITI mark is the dominant element in Respondent’s domain name”). See also Apple Computer, Inc. v. Apple-Computers c/o Marcus Grey, FA535416 (Forum Sept. 22, 2005) (ordering transfer of <apple- computers.us> in part because the domain name fully incorporated the complainant’s mark).
d. Respondent has no rights or legitimate interests in the Offending Domain. (ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).)
Respondent has no trademark or other intellectual property rights in the Offending Domain. Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. See Amazon.com, Inc. v. Rayaneh Net, FA 0309000196217 (Forum Oct. 28, 2003) (finding no legitimate rights in the “amazoniran.com” domain name, in part, because the complainant did not grant the respondent a license to use the AMAZON.COM mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting the respondent to use the complainant’s trademark in domain name evidence of the respondent’s illegitimate interests).
Respondent, who uses the name “kang xiaoping / kang xiaoping”, has never been commonly known as “designforkohler.com” and has never used any trademark or service mark similar to the Offending Domain by which he or she may have come to be known, other than the infringing use noted herein. See Kohler Co. v. JasonDinner.com a/k/a Jason Dinner, FA1104001383441 (Forum May 22, 2011) (finding that the respondent had not established rights or legitimate interests in the disputed domain names where there was no evidence that the respondent was commonly known by the disputed domain name); Kohler Co. v. Redfire Internet Mktg., FA1111001417320 (Forum Jan. 10, 2012) (finding that the respondent had not established rights or legitimate interests in <kohlerengineparts.org> where there was no evidence that the respondent was commonly known by the disputed domain name and the respondent failed to reply); McClatchy Mgmt. Servs., Inc., v. Peter Carrington a/k/a Party Night Inc., FA 0304000155902 (Forum June 2, 2003) (finding that the respondent failed to establish rights to or legitimate interests in the disputed domain names where the respondent was not commonly known as “Startribun” or “Startribune”); see also GlaxoSmithKline Biologicals S.A. v. David Pfeffer c/o JeMM Prods., FA467340 (Forum June 10, 2005) (in which the Panel ordered transfer of <cervarix.us> based in part upon a finding that the respondent lacked rights or legitimate interests in the domain name).
Further, the notoriety of the KOHLER mark and its strong affiliation with Complainant, coupled with the fact that Respondent registered the Offending Domain long after registration of the KOHLER mark, makes it clear that Respondent does not have any rights or interests in a domain name incorporating the term KOHLER. See Sony Kabushiki Kaisha a/t/a Sony Corporation v. John Zuccarini d/b/a Rave Club Berlin, FA 0204000109040 (Forum May 23, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating famous SONY marks); Bank of Am. Corp. v. BanofAmerica, FA 0203000105885 (Forum Apr. 12, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating variant of famous BANK OF AMERICA marks); Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant’s distinct and famous NIKE trademark); see also CBS Broad., Inc.
v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent has never operated any bona fide or legitimate business under the Offending Domain, and is not making protected non-commercial or fair use of the Offending Domain. Respondent uses the Offending Domain in conjunction with a website that appears to be a phishing website inasmuch as it solicits personal information from consumers, including on information and belief, email addresses, and purports to be a login portal for an undisclosed website which could be mistaken for an official Kohler website based on the Offending Domain itself. See Annex 4. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Diners Club International Ltd. v. Steve Bateman / CCC, FA1601001658326 (Forum Feb. 29, 2016) (finding domain that resolved to a website that offered coupons and discount programs for a variety of businesses that competed with complainant’s business and asked for consumers’ contact information, including social security numbers, income levels, address, and marital status did not establish rights or legitimate interests in disputed domain); Wells Fargo & Company v. blend kent / wellsargoverification, FA1510001643442 (Forum Nov. 25, 2015) (“The act of ‘phishing’, as such practices are known, does not constitute a bona fide offering of goods and services or a legitimate non- commercial or fair use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.”); ZestFinance, Inc. v. Domain Admin / Whois Privacy Corp., FA1507001630474 (Forum Aug. 19, 2015) (finding the website to which the disputed domain resolved that asked for an Internet user’s name, email address, phone number, address and social security number was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Finally, Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to the KOHLER Marks. See Amazon.com, Inc. v. Rayaneh Net, FA0309000196217 (Forum Oct. 28, 2003) (finding no legitimate rights in the “amazoniran.com” domain name, in part, because the complainant did not grant the respondent a license to use the AMAZON.COM mark); Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting the respondent to use the complainant’s trademark in domain name evidence of the respondent’s illegitimate interests).
e. Respondent registered and uses the Offending Domain in bad faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).)
As the facts set forth above reveal, Respondent registered and uses the Offending Domain in bad faith. Respondent had actual knowledge of Complainant’s marks, as evidenced by Respondent’s use of the KOHLER mark in the Offending Domain. The mere fact that Respondent has registered a domain name which incorporates the famous trademark of a well- known company is alone sufficient to give rise to an inference of bad faith. See, e.g., Nw. Airlines, Inc., v. Mario Koch, FA 95688 (Forum Oct. 27, 2000) (“The selection of a domain name which entirely incorporates the name of the world’s fourth largest airline could not have been done in good faith”). Analogous activities by cyber-squatters operating in other industries were considered to rise to the level of “opportunistic bad faith.” See Singapore Airlines Ltd. v. P & P Servicios de Communicacion, D2000-0643 (WIPO Sept. 11, 2000) (holding that “the domain name singaporeairlines.com is so obviously connected with a well- known airline that its very registration and use by someone with no connection with the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cyber- squatting’”).
Further, Respondent had at least constructive knowledge of Complainant’s CITI Marks because of Complainant’s trademark registrations in the United States and China. See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” under 15 U.S.C. §1072); Orange Glo Int’l v. Blume, FA118313 (Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). Even if Respondent could claim lack of knowledge, bad faith can exist when a search of a trademark registry would reveal the registration rights of a complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, D2001- 1384 (WIPO Jan. 3, 2002) (“Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant’s pending application for registration”).
Respondent has also evidenced bad faith registration and use through its use of what appears to be a phishing website that collects consumer information, including the potential collection of email addresses. This conduct evidences bad faith registration and use under UDRP ¶4(b)(iv) by intentionally attempting to attract, for commercial gain, Internet users to the Offending Domain by creating a likelihood of confusion as to Complainant’s sponsorship of or affiliation with the Offending Domain. See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum Jul. 13, 2015) (“Where a confusingly similar domain name is used to acquire personal or financial information, such phishing supports findings of bad faith registration and use.”); HD Michigan Inc. v Petersons Auto, FA135608 (Nat. Arb. Forum Jan 8, 2003) (finding that the disputed domain name was registered and used in bad faith under UDRP ¶4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attract Internet users to the Respondent’s fraudulent web site by using the Complainant’s famous marks and likenesses).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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(f), 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 (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.”).
Complainant uses the KOHLER mark in connection with its business of providing plumbing products. Complainant registered its KOHLER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 577,392, registered July 14, 1953). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even though Respondent is in another country. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). It appears Complainant’s mark’s registration with China Trademark Office expired December 24, 2010 (or at least no evidence was submitted showing it was renewed). Nevertheless, Complainant has established Policy ¶4(a)(i) rights in the KOHLER mark.
Complainant claims Respondent’s <designforkohler.com> is confusingly similar to the KOHLER mark because it fully incorporates the KOHLER mark and merely adds the terms “design for” and the “.com” gTLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. The phrase “design for” is a generic, descriptive phrase which must be disregarded under a Policy ¶4(a)(i) analysis. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Respondent’s <designforkohler.com> is confusingly similar to the KOHLER mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent has no rights or legitimate interests in <designforkohler.com>. Respondent is not commonly known by the disputed domain name, nor has Complainant given any license, permission or authorization by which Respondent could use the KOHLER mark. The WHOIS information regarding the disputed domain name lists “kang xiaoping” as registrant of record, which bears no obvious relationship to the disputed domain name. There is no basis to find Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii) because Respondent has submitted no evidence to that effect. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The domain resolves to an active website that seems to be a phishing operation. Phishing does not create rights or legitimate interests. See Nordstrom, Inc. v. Above.com Domain Privacy, FA 1654490 (Forum Feb. 1, 2016) (finding respondent failed under Policy ¶¶4(c)(i) and (iii) as it phished for internet users’ personal information via a fake survey). Respondent has engaged in phishing behavior to acquire personal information of Internet users, which indicates Respondent has no rights or legitimate interests in <designforkohler.com>.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is registered and used <designforkohler.com> in bad faith. Respondent appears to phish for Internet user information, presumably for commercial gain under Policy ¶4(b)(iv). Phishing behavior is evidence of bad faith under Policy ¶4(b)(iv). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Respondent registered and uses the disputed domain name intending to confuse Internet users for commercial gain under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the KOHLER mark at the time the domain was registered. Absent a response to the contrary, this Panel is persuaded by Complainant’s argument. Respondent had actual knowledge of Complainant's mark and rights. A respondent demonstrates bad faith where its use of a domain creates confusion with a complainant’s mark and rights. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”). A respondent acts in bad faith under 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 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent has engaged in bad faith registration and use under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <designforkohler.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 9, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page