BSH Home Appliances Corporation v. Dmitriy Kolchin / Jim Kolchin / Jim K
Claim Number: FA1901001823665
Complainant is BSH Home Appliances Corporation (“Complainant”), represented by Jaime Rich Vining of Friedland Vining, P.A., Florida, USA. Respondent is Dmitriy Kolchin / Jim Kolchin / Jim K (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <thermadorrepairsandiego.com>, <thermadorrepair-chicago.com>, <thermadorrepair-dallas.com>, <thermadorrepairsanfran.com>, <thermador-seattle.com>, <independentthermador.com>, <thermador-fm.com>, <thermadoronlyrepair.com>, <thermador-fl.com>, <thermador-li.com>, <thermador-potomac.com>, <octhermadorrepair.com>, <philly-thermadorrepair.com>, <repairthermadorny.com>, <thermador-atlanta.com>, <thermador-chicago.com>, <thermador-englewoodnj.com>, <thermador-sonoma.com>, <thermadorrepairphiladelphia.com>, and <thermadorrepairportland.com> registered with GoDaddy.com, LLC; and, <thermadorcare.com> and <thermador-care.com>, registered with Wild West Domains, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2019; the Forum received payment on January 4, 2019.
On January 7, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thermadorrepairsandiego.com>, <thermadorrepair-chicago.com>, <thermadorrepair-dallas.com>, <thermadorrepairsanfran.com>, <thermador-seattle.com>, <independentthermador.com>, <thermador-fm.com>, <thermadoronlyrepair.com>, <thermador-fl.com>, <thermador-li.com>, <thermador-potomac.com>, <octhermadorrepair.com>, <philly-thermadorrepair.com>, <repairthermadorny.com>, <thermador-atlanta.com>, <thermador-chicago.com>, <thermador-englewoodnj.com>, <thermador-sonoma.com>, <thermadorrepairphiladelphia.com>, and <thermadorrepairportland.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. On January 7, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <thermadorcare.com> and <thermador-care.com> domain names are registered with Wild West Domains, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Wild West Domains, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Wild West Domains, LLC registration agreements and have 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 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2019 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@thermadorrepairsandiego.com, postmaster@thermadorrepair-chicago.com, postmaster@thermadorrepair-dallas.com, postmaster@thermadorrepairsanfran.com, postmaster@thermador-seattle.com, postmaster@independentthermador.com, postmaster@thermador-fm.com, postmaster@thermadoronlyrepair.com, postmaster@thermador-fl.com, postmaster@thermador-li.com, postmaster@thermador-potomac.com, postmaster@thermadorcare.com, postmaster@thermador-care.com, postmaster@octhermadorrepair.com, postmaster@philly-thermadorrepair.com, postmaster@repairthermadorny.com, postmaster@thermador-atlanta.com, postmaster@thermador-chicago.com, postmaster@thermador-englewoodnj.com, postmaster@thermador-sonoma.com, postmaster@thermadorrepairphiladelphia.com, and postmaster@thermadorrepairportland.com. Also on January 9, 2019, 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 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <thermadorrepairsandiego.com>, <thermadorrepair-chicago.com>, <thermadorrepair-dallas.com>, <thermadorrepairsanfran.com>, <thermador-seattle.com>, <independentthermador.com>, <thermador-fm.com>, <thermadoronlyrepair.com>, <thermador-fl.com>, <thermador-li.com>, <thermador-potomac.com>, <octhermadorrepair.com>, <philly-thermadorrepair.com>, <repairthermadorny.com>, <thermador-atlanta.com>, <thermador-chicago.com>, <thermador-englewoodnj.com>, <thermador-sonoma.com>, <thermadorrepairphiladelphia.com>, and <thermadorrepairportland.com> domain names (the “disputed domain names”) are confusingly similar to Complainant’s THERMADOR mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain names.
3. Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for the THERMADOR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,144,768, registered Dec. 30, 1980), used in connection with offering repair services.
Respondent registered the disputed domain names on the following dates:
|
Domain Name |
Registration Date |
|
<thermadorrepairsandiego.com>, |
July 3, 2018 |
|
<thermadorrepair-chicago.com> |
June 12, 2018 |
|
<thermadorrepair-dallas.com> |
June 12, 2018 |
|
<thermadorrepairsanfran.com> |
July 3, 2018 |
|
<thermador-seattle.com> |
June 6, 2018 |
|
<independentthermador.com> |
June 7, 2018 |
|
<thermador-fm.com> |
June 1, 2018 |
|
<thermadoronlyrepair.com> |
July 3, 2018 |
|
<thermador-fl.com> |
July 10, 2018 |
|
<thermador-li.com> |
April 27, 2018 |
|
<thermador-potomac.com> |
April 27, 2018 |
|
<thermadorcare.com> |
December 8, 2013 |
|
<thermador-care.com> |
September 29, 2015 |
|
<octhermadorrepair.com> |
June 26, 2018 |
|
<philly-thermadorrepair.com> |
June 26, 2018 |
|
<repairthermadorny.com> |
June 26, 2018 |
|
<thermador-atlanta.com> |
June 21, 2018 |
|
<thermador-chicago.com> |
May 11, 2018 |
|
<thermador-englewoodnj.com> |
June 21, 2018 |
|
<thermador-sonoma.com> |
May 28, 2018 |
|
<thermadorrepairphiladelphia.com> |
June 26, 2018 |
|
<thermadorrepairportland.com> |
July 20, 2018 |
Respondent uses the disputed domain names to compete with 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.
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.”).
Preliminary Issue: Multiple Respondents
Complainant alleges that the disputed domain names are effectively controlled by the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant shows that the websites resolving from the disputed domain names contain substantially similar content. Complainant further argues that the majority of the disputed domain names were registered within days of each other and all but two of the domain names identify the same surname, phone number and email address. Complainant argues that the WHOIS information for the <oc-repair.com> domain name used as contact information by Jim Kolchin and Jim K is owned by “Dmitriy Kolchin d/b/a Smith Brothers Appliance Repair,” located at 3419 E Chapman Ave. #223, Orange, CA 92869, (888) 878-7227, admin@oc-repair.com, which affirmatively links all three aliases for the disputed domain names.
The Panel finds that Complainant has presented sufficient, unrebutted evidence that the disputed domain names are controlled by the same person or entity. Therefore, this proceeding will continue against the named Respondents and they are referred to collectively as Respondent throughout this decision.
The Panel finds that Complainant has established rights in the THERMADOR mark based on its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s disputed domain names incorporate Complainant’s mark along with generic terms and/or geographic indicators and the “.com” gTLD. The addition of a generic term and a gTLD does not distinguish a disputed domain name from a 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)). Likewise, the addition of a geographic term does not distinguish a disputed domain name from a complainant’s mark. See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”). Here, Respondent merely includes the generic top-level domain “.com” and the generic terms or geographic indicators “Repair,” “San Diego,” “Chicago,” “Dallas,” “San Fran,” “Seattle,” “Independent,” “FM,” “Only,” “FL,” “LI,” “Potomac,” “Care,” “OC,” “Philly,” “NY,” “Atlanta,” “Englewood NJ,” “Sonoma,” “Philadelphia,” and/or “Portland” to Complainant’s fully incorporated mark. Therefore, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s THERMADOR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 lacks rights and legitimate interest in the disputed domain name because Respondent is not commonly known by the disputed domain name. Respondent has not been authorized or licensed to use Complainant’s mark. The WHOIS information of record identifies Respondent as “Jim K / Jim Kolchin / Dmirity Kolchin.” Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complainant argues Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names because Respondent uses them to offer services in competition with Complainant. Use of a disputed domain name to offer products or services that directly compete with a complainant is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving webpage for each disputed domain name, where Respondent purports to offer repair services in competition with Complainant. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶ 4(c)(i) or (iii).
Complainant further argues that Respondent attempts to divert Internet users to the disputed domain names to create the false impression that some affiliation exists between Respondent and Complainant by displaying the THERMADOR mark and offering services similar to those of Complainant. Use of a disputed domain name to divert Internet users and confuse them into believing an affiliation exists between a respondent and a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to disrupt Complainant’s business by offering unauthorized goods and services under Complainant’s mark and in competition with Complainant. Use of a disputed domain name to disrupt a complainant’s business by offering competing goods or services is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent displays Complainant’s THERMADOR mark to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Use of a disputed domain name to confuse Internet users into believing a respondent is associated with Complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied 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 <thermadorrepairsandiego.com>, <thermadorrepair-chicago.com>, <thermadorrepair-dallas.com>, <thermadorrepairsanfran.com>, <thermador-seattle.com>, <independentthermador.com>, <thermador-fm.com>, <thermadoronlyrepair.com>, <thermador-fl.com>, <thermador-li.com>, <thermador-potomac.com>, <thermadorcare.com>, <thermador-care.com>, <octhermadorrepair.com>, <philly-thermadorrepair.com>, <repairthermadorny.com>, <thermador-atlanta.com>, <thermador-chicago.com>, <thermador-englewoodnj.com>, <thermador-sonoma.com>, <thermadorrepairphiladelphia.com>, and <thermadorrepairportland.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 6, 2019
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