DECISION

 

Kohler Co. v. jonathan fawkes / Pure Platinum Enterprises

Claim Number: FA1805001787202

PARTIES

Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA.  Respondent is jonathan fawkes / Pure Platinum Enterprises (“Respondent”), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <kohlerluxstone.com>, registered with Name.com, 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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 16, 2018; the Forum received payment on May 17, 2018.

 

On May 17, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <kohlerluxstone.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2018 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@kohlerluxstone.com.  Also on May 29, 2018, 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 June 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant, Kohler Co., is a worldwide provider in bath and kitchen products. Complainant has rights in the KOHLER mark and pending rights in the LUXSTONE mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., KOHLER—Reg. No. 577,392, registered July 14, 1953; LUXSTONE—Ser. No. 87708802, filed on Dec. 5, 2017). See Amend. Compl. Annex. 3. Respondent’s <kohlerluxstone.com> is identical or confusingly similar to Complainant’s mark as Respondent incorporates the entire KOHLER and LUXSTONE marks and adds the “.com” generic top-level domain (“gTLD”).

2.    Respondent does not have any rights or legitimate interests <kohlerluxstone.com> domain name. Respondent is not permitted or licensed to use Complainant’s KOHLER mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <kohlerluxstone.com> domain name to host advertising links to commercial websites unrelated to Complainant. See Amend. Compl. Annex. 4.

3.    Respondent has registered and is using the domain names in bad faith. Respondent attempts to attract users to the disputed domain name for commercial gain. In addition, Respondent uses the <kohlerluxstone.com> domain name to host third party advertisements. Finally, Respondent must have had actual and constructive knowledge of Complainant’s rights in the KOHLER and LUXSTONE marks prior to registering the disputed domain name.

 

B.   Respondent:

1.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <kohlerluxstone.com> domain name is confusingly similar to Complainant’s KOHLER and LUXSTONE marks.

2.    Respondent does not have any rights or legitimate interests in the  <kohlerluxstone.com> domain name.

3.    Respondent registered or used the <kohlerluxstone.com> domain name in bad faith.

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights to the KOHLER and LUXSTONE marks based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Further, trademark protection extends back to the application filing date of a registered mark. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the Feb. 20, 2003 filing date with the USPTO as the trademark application was ultimately successful). Complainant provides a list and copies of its USPTO registration for the KOHLER mark and pending registration for the LUXSTONE mark. (e.g., KOHLER—Reg. No. 577,392, registered July 14, 1953). See Amend. Compl. Annex 3. Complainant also claims it has filed for registration of the LUXSTONE mark under Serial Number 87708802, filed on December 5, 2017. Therefore, the Panel finds that Complainant has sufficiently demonstrated its rights in the KOHLER and/or LUXSTONE marks per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <kohlerluxstone.com> domain name is identical or confusingly similar to Complainant’s KOHLER and LUXSTONE marks. Specifically, Complainant argues Respondent merely combines both marks, removes the space and adds a gTLD to Complainant’s marks. The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i) See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely combines the KOHLER and LUXSTONE marks, removing the space and adding the “.com” gTLD. Regardless of Complainant’s rights in the LUXSTONE mark, the Panel determines the domain name consists of Complainant’s KOHLER mark plus the added descriptive term “luxstone,” which is not a change which would distinguish the domain name from the mark. See Bloomberg Finance L.P. v. Sunny Bhadauria, FA 1786429 (Forum June 7, 2018) (finding the <bloombergquint.org> domain name to be confusingly similar to the complainant’s BLOOMBERG mark, as the name consists of the mark, the added term “quint” (which refers to the complainant’s Indian business partner “Quintillian Media”) and the gTLD “.org”). The Panel therefore finds that the <kohlerluxstone.com> is confusingly similar to Complainant’s KOHLER mark per 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in <kohlerluxstone.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the KOHLER mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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). Additionally, lack of evidence in the record to indicate a respondent is authorized to use complainant’s mark may support a finding that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “jonathan fawkes / Pure Platinum Enterprises” See Amend. Compl. Annex. 2. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Complainant further argues Respondent fails to use the <kohlerluxstone.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant contends Respondent uses the disputed domain name in conjunction with a website that contains advertising links to commercial websites unrelated to Complainant. Using a confusingly similar domain name to advertise links to third party websites is further evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of the disputed domain which show the third party links that are being advertised on the resolving website. See Amend. Compl. Annex. 4. Therefore, the Panel finds Respondent failed to use <kohlerluxstone.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii).  

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <kohlerluxstone.com> domain name in bad faith because Respondent is using the disputed domain name to host and advertise links to third party websites. Use of a disputed domain name to host sponsored advertisements, through which the respondent presumably profited, indicates that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Tmobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Here, Complainant provides screenshots of the website resolving from the disputed domain which show third party links advertised on the website. See Amend. Compl. Annex. 4. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).

 

Next, Complainant argues Respondent is intentionally attempting to attract—for commercial gain—Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s KOHLER mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant claims Respondent is using the fame of the Complainant’s trademarks to improperly increase traffic to the domain name for Respondent’s commercial gain. Complainant provides a screenshot of the disputed domain name’s resolving website. See Amend. Compl. Annex 4. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name.  See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”).  Complainant asserts that the mere fact that Respondent has registered a domain name which incorporates the well-known trademarks of a global company is alone sufficient to give rise to an inference of bad faith. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the KOHLER mark when it registered and subsequently used <kohlerluxstone.com>, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).

 

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 <kohlerluxstone.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  July 3, 2018