The Complainant is Kohler Co. of Kohler, Wisconsin, United States of America (“United States”) represented by Winston & Strawn LLP, United States.
The Respondent is Ivan Kotov of Kopeisk, the Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2019. On February 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 7, 2019, the Center sent an email communication in English and Russian regarding the language of the proceedings. On February 8, 2019, the Complainant requested English to be the language of the proceedings. The Respondent did not comment on the language of the proceedings.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2019.
The Center appointed Assen Alexiev as the sole panelist in this matter on March 13, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant was founded in 1873 and started producing engines in 1920. The Complainant’s worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices.
The Complainant is the owner of the following trademark registrations for KOHLER (the “KOHLER trademark”):
- the trademark KOHLER with registration No. 590,052, registered in the United States on May 18, 1954 for goods in International Class 7;
- the trademark KOHLER with registration No. 3,998,594, registered in the United States on July 19, 2011 for goods in International Classes 7 and 9;
- the trademark KOHLER with registration No. 51429, registered in the Russian Federation on November 28, 1974 for goods in International Classes 7, 9, 11 and 12; and
- the trademark KOHLER with registration No. 371412, registered in the Russian Federation on February 5, 2009 for services in International Class 35.
The disputed domain name was registered on November 6, 2018. It resolves to a website featuring pornographic content. 5. Parties’ Contentions A. Complainant
The Complainant submits that it has used the KOHLER trademark extensively over the years by providing engines and other power-generating products that are marketed and sold throughout the world. Due to the extensive use and registration of the KOHLER trademark, it has become famous under the laws of the United States and countries around the world and has obtained the status of notorious mark.
According to the Complainant, the disputed domain name is confusingly similar to the KOHLER trademark because it fully incorporates it as the dominant element in the disputed domain name. The addition of the descriptive term “expo” refers to product shows in which the Complainant participates, and does not sufficiently differentiate the disputed domain name from the KOHLER trademark.
The Complainant contends that the Respondent lacks rights or legitimate interests in the disputed domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of it. The Complainant has not granted the Respondent any authorization to register or use any domain names that are confusingly similar to the KOHLER trademark. The Respondent is not commonly known as “Expo Kohler” and has never used any trademark or service mark similar to the disputed domain name by which he may have come to be known, other than its use for a pornographic website. This is not a legitimate noncommercial or fair use of the disputed domain name, but it tarnishes the Complainant’s KOHLER trademark.
The Complainant asserts that the Respondent has registered and is using the disputed domain name in bad faith. When registering the disputed domain name, the Respondent had knowledge of the KOHLER trademark, which is registered in the Russian Federation, where the Registrar and Respondent are located, and in the United States, to whose population the Respondent targets its website. The Respondent’s use of the disputed domain name to redirect Internet users who are looking for the Complainant’s products and services to adult-oriented content is indicative of an intent to harm the Complainant’s business, as the
association between adult-oriented videos and the KOHLER trademark tarnishes the Complainant’s
reputation and goodwill. The Respondent is also using the disputed domain name to display commercial banners and advertisements. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceedings
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, 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.
The Complainant has submitted its Complaint in the English language, and requests the proceeding to be held in English. It argues that the Respondent is fully capable of proceeding in English, because the website at the disputed domain name is in English and is directed at English-speaking consumers. The Complainant also submits that a translation of the Complaint would unduly burden the Complainant and unnecessarily delay this proceeding.
The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding, and the Respondent has not objected to the Complainant’s request the proceedings to be held in English. The website at the disputed domain name is in English. This satisfies the Panel that the Respondent would not be disadvantaged if the language of the proceeding is English and that using the English language in this proceeding will be fair and efficient.
Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English. 6.2. Substantive Matters
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”
In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the KOHLER trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the general Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.
The relevant part of the disputed domain name is therefore the sequence “expokohler”. It consists of the elements “expo” and “kohler”. The “kohler” element is identical to the KOHLER trademark, while the “expo” element is the short version of the word “exposition”. The Complainant states that it participates in trade expositions. All this makes it likely that Internet users may regard the disputed domain name as referring to an exposition where the Complainant’s products and services are displayed and offered for sale.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the KOHLER trademark in which the Complainant has rights. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the KOHLER trademark, that the Respondent is not commonly known by the disputed domain name and is not carrying out a bona fide use of the disputed domain name, but uses it for a pornographic website. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not submitted a Response and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.
The disputed domain name is confusingly similar to the KOHLER trademark and as discussed above in section 6.2.A, Internet users may regard it as referring to an exposition where the Complainant’s products and services are displayed and offered for sale. The disputed domain name resolves to a pornographic website and this use has not been authorized by the Complainant. The KOHLER trademark has long been registered in the Russian Federation where the Respondent is located.
In view of the above and in the lack of any denial by the Respondent of the above, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s KOHLER trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract Internet users to the Respondent’s pornographic website. Such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
As discussed above, the disputed domain name fully incorporates the KOHLER trademark and is confusingly similar to it. The Respondent does not deny that it is linked to a pornographic website offering explicit adult content. The KOHLER trademark has long been registered in the Russian Federation where the Respondent is located.
Taking the above into account, the Panel accepts that as more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and targeting the KOHLER trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an online location related to an exposition featuring the Complainant’s products and services and then offering them pornographic content, likely for commercial gain. In view of this, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s KOHLER trademark.
Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: March 24, 2019
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