Kohler Co. v. Wes Metcalfe
Claim Number: FA1808001801387
Complainant is Kohler Co. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Wes Metcalfe (“Respondent”), represented by Henry Pogorzelski of Conley Rose, P.C, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org>, registered with GoDaddy.com, LLC.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 14, 2018; the Forum received payment on August 15, 2018.
On August 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@kohlersupercenter.com, postmaster@kohlersupercenter.info, postmaster@kohlersupercenter.net, postmaster@kohlersupercenter.org. Also on August 20, 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.
A timely Response was received and determined to be complete on October 4, 2018.
On October 10, 2018, the Forum received an Additional Submission from Complainant, which was filed in a timely manner according to Supplemental Rule 7.
On October 16, 2018, the Forum received an Additional Submission from Respondent, which was filed in a timely manner according to Supplemental Rule 7.
On October 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide provider of engines and other power-generating products. Complainant has rights in the KOHLER mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 590,052, registered May 18, 1954). See Amend. Compl. Annex 3. Respondent’s <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names are confusingly similar to Complainant’s KOHLER mark as Respondent fully incorporates the mark while adding the generic phrase “super center” and a “.com,” “.info,” “.net,” or “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names. Respondent is not permitted or authorized to use Complainant’s KOHLER mark and is not commonly known by the disputed domain name. Additionally, 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. Rather, Respondent uses the <kohlersupercenter.com> domain name to advertise goods and services of Complainant’s competitors. Furthermore, Respondent’s <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names currently resolve to inactive websites.
Respondent registered and uses the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users to the disputed domain names where Respondent features goods and services from Complainant’s competitors. Respondent also registered the disputed domain names with a privacy service to hide its identity. Finally, Respondent had actual knowledge of Complainant’s rights in the KOHLER mark prior to registering the disputed domain names.
B. Respondent
Respondent is the CEO and co-founder of Generator Supercenter, Inc., and Respondent registered the disputed domain names on behalf of Generator Supercenter. Respondent has sold, installed, provided services, and rented generators for homes and business since 2005. See Metcalfe Decl. at ¶ 4. Respondent entered into a business agreement with Complainant and one of its distributors, allowing Respondent to provide information for Complainant’s products to Respondent’s customers. See Sherman Decl. at ¶ 4-7, Exs. A and B. Respondent does not dispute Complainant has rights in the KOHLER mark, but claims the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names incorporate the “supercenter” term, which alludes to Complainant’s GENERATOR SUPERCENTER mark registered with the USPTO (e.g., Reg. No. 5,141,083, registered Feb. 14, 2017).
Respondent has rights or legitimate interests in the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names. Respondent has a legitimate interest in the disputed domain names as it advertises its products and services, including its services for Complainant’s products.
Respondent did not register or use the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names in bad faith. Respondent registered the dispute domain names on behalf of Generator Supercenter as part of a distributorship arrangement with Complainant. Respondent’s disputed domain names also do not disrupt nor attract, for commercial gain, users as three of the domain names resolve to inactive websites and one provides services for Complainant’s products.
Respondent requests that the disputed domain names be cancelled rather than transferred to Complainant.
C. Additional Submissions
Complainant’s Additional Submission
Wes Metcalfe should be considered as the sole respondent before the Panel, not Generator Supercenter, Inc., because Wes Metcalfe is the registrant listed on the WHOIS report for the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names. See Annex 2. Respondent (meaning Wes Metcalfe) was not a party to a written or oral agreement with Complainant, as Generator Supercenter, Inc. was the only other party to the agreement. Respondent (meaning Wes Metcalfe) registered all four domain names in bad faith, with the intent to redirect <kohlersupercenter.com> to a third party domain that it had a financial interest in (meaning Generator Supercenter, Inc.), and warehouse <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org>.
Regardless of who is considered the respondent, the Kohler Dealer Agreement (the “Agreement”) does not authorize Respondent to use the KOHLER mark in a domain name. Respondent uses <kohlersupercenter.com> to redirect Internet users to its own website, which advertises competing goods and services without reference to any of Complainant’s goods or services.
Respondent has no rights in the generic term “supercenter” contained within the domain names.
Respondent’s Additional Submission
Wes Metcalfe was, at all relevant times, acting on behalf of Generator Supercenter, Inc.
Respondent was a Kohler dealer at the time <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> were registered, and is still a Kohler dealer. The Kohler Dealer Agreement places no restrictions upon using the KOHLER mark to register domain names. As a Kohler dealer, Respondent has rights and legitimate interests in <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names. Respondent did not register the domain names in bad faith.
Transfer of domain names containing the word “supercenter” to Complainant is not appropriate, however cancellation of <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> is not opposed.
Complainant holds trademark rights for the KOHLER mark. Respondent holds trademark rights in GENERATOR SUPERCENTER, but holds no such rights in the generic word “supercenter.” Respondent’s domain names are confusingly similar to Complainant’s KOHLER mark.
Complainant and Respondent entered in to a business relationship on or around June 24, 2010. The Agreement authorized a “reasonable program of local advertising.” The Agreement did not authorize Respondent to use Complainant’s registered Mark. The disputed domains, <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org>, were all registered on July 13, 2017. Respondent lacks right or legitimate interests in the disputed domain names.
Respondent’s <kohlersupercenter.com> domain name currently resolves to a domain which advertises goods and services of Complainant’s competitors with no reference to Complainant’s goods or services.[i] Respondent’s <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domains all resolve to inactive websites. Respondent registered and uses the domain names in bad faith.
The Additional Submissions were considered by the Panel, but did not impact the Panel’s decision beyond providing additional evidence of the current use of the disputed domain names.
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.
Threshold Issue: Business Dispute Outside the Scope of the Policy
The Panel finds that there is sufficient evidence for it to properly decide the dispute under the Policy. Although Respondent claims that it was in a business relationship with Complainant, this case does not involve possible causes of action for breach of contract or complex intellectual property issues unfit for the Panel. The Panel has discretion to determine whether or not it has jurisdiction over this dispute. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“This Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction”); Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (finding jurisdiction where Complainant properly alleged bad-faith use and registration of the domain name at issue). The Panel notes that Complainant alleges bad-faith use and, as discussed below, has met its burden of proof in regard to those allegations. This is exactly the type of case which is fit for review by the Panel.
The Panel finds that Complainant has rights in the KOHLER mark through its registration with the USPTO (e.g. Reg. No. 590,052, registered May 18, 1954). Complainant provides a copy of its USPTO registration for the KOHLER mark. See Amend. Compl. Annex 3. Registration of a mark with the USPTO suffices to provide at least prima facie evidence of a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark”); Target Brands, Inc. v. Jennifer Beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with [the USPTO]”). There is no contrary evidence. Accordingly, the Panel finds that Complainant has established rights in the KOHLER mark for the purposes of Policy ¶ 4(a)(i).
The Panel further agrees with Complainant that Respondent’s <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names are confusingly similar to Complainant’s mark. The Panel notes that Respondent merely adds a generic term and a gTLD to the mark. Adding a generic term and a gTLD to Complainant’s mark fails to sufficiently mitigate any confusing similarity between the disputed domain names and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that the disputed domain names are confusingly similar to the KOHLER mark under Policy ¶ 4(a)(i).
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)); 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 asserts Respondent has no rights or legitimate interests in the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names. Specifically, Complainant contends Respondent is not permitted or authorized to use Complainant’s KOHLER mark and is not commonly known by the disputed domain names. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that Respondent is not commonly known by the domain name”). The WHOIS information associated with this case identifies Respondent as “Wes Metcalfe.” Respondent has rights in the GENERATOR SUPERCENTER mark through its registration with the USPTO (e.g., Reg. No. 5,141,083, registered Feb. 14, 2017), but holds no such rights in the generic term “supercenter.”
Additionally, lack of authorization to use a complainant’s mark may indicate a respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Respondent advances no meaningful argument that it had consent or authorization to use the KOHLER mark, only that it was not precluded from doing so. The Agreement authorizes Respondent to use only “reasonable” means of “local advertising,” including “[b]ooklets, circulars, and other advertising material” to be furnished by Complainant. Nothing in the Agreement could be reasonably interpreted as granting Respondent the right to use the KOHLER mark without consent of Complainant. There is no evidence on the record suggesting Wes Metcalfe or Generator Supercenter, Inc. are commonly known by the disputed domain names or by the generic term “supercenter.” Further, there is no evidence in the record the Respondent was authorized to use the KOHLER mark. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name.
Complainant further alleges that Respondent fails to use the disputed domain names in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends Respondent uses the <kohlersupercenter.com> domain name to advertise competing goods and services, while the <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names currently resolve to inactive websites. Using a confusingly similar domain name to advertise competing goods or services does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering or goods or services, nor is it a legitimate noncommercial or fair use). Additionally, failure to actively use a disputed domain name may preclude a finding that a respondent has rights or legitimate interests. See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction’”). In its Additional Response, Complainant provides screenshots of <kohlersupercenter.com>, which redirects to a website which advertises itself as the “#1 Dealer of Generac Generators in North America,” with no reference to Complainant's goods or services. Complainant provides additional screenshots of <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> which resolve to inactive websites. See Complainant’s Add’l Submission at 9-10; Annex 3-4. It is clear from the record that Respondent does not use the disputed domain names for a bona fide offering of goods or services, nor a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant claims Respondent registered the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names in bad faith. Complainant argues that Respondent is attempting to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain where it offers competing goods and services. Use of a disputed domain name to commercially benefit from the sale of competing goods or services may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where Respondent used the disputed domain name to resolve to a website upon which Respondent passes itself off as Complainant and offers online cryptocurrency services in direct competition with Complainant’s business). As discussed above, <kohlersupercenter.com> resolves to Respondent’s website which advertises competing goods and services without any reference to Complainant’s goods and services. For the purposes of Policy ¶¶ 4(b)(iii), using a domain name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark is evidence of bad faith. That is exactly the case here: Respondent redirects Internet users from <kohlersupercenter.com> to its own website which, at least on the main page, exclusively advertises competing goods and services.
Complainant further alleges <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> resolve to inactive pages with no demonstrable intent for active use. See Complainant’s Add’l Submission, Annex 4. Failure to actively use a domain name can, in appropriate circumstances, be evidence of bad faith registration and use. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015). The Panel notes that Respondent is not making any active use of <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org>.
Finally, Complainant asserts that Respondent registered the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names with actual knowledge of Complainant’s rights in the KOHLER mark. Actual knowledge may be found where a complainant’s mark is famous and Respondent’s use of the mark suggests that it actually knew of complainant’s rights in the mark. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding Respondent had actual knowledge of Complainant’s COACHELLA mark when it registered and used <coachellastuff.com> domain name—and thus did so in bad faith—because Complainant presented adequate evidence that its mark was well-known and famous). Complainant argues that due to Respondent’s incorporation of the mark in its disputed domain names, it had actual knowledge. Respondent does not dispute having actual knowledge of Complainant’s mark.
In light of the foregoing, the Panel concludes that Respondent registered and uses the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kohlersupercenter.com>, <kohlersupercenter.info>, <kohlersupercenter.net>, and <kohlersupercenter.org> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: October 18, 2018
[i] The disputed domain resolves to <www.generatorsupercenter.com>, the primary domain of Respondent, which advertises itself as the “#1 Generac Dealer in North America.” No reference to Complainant’s goods or services can be found on the front page. See Complainant’s Add’l Submission at 10-11; Annex 3.
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