The Complainant is Kohler Co., United States of America (“United States”), represented by Winston & Strawn, LLP, United States.
The Respondent is Gao Cunjin, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019. On April 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 5, 2019.
On April 5, 2019, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended 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, in English and Chinese, of the Complaint, and the proceedings commenced on April 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2019.
The Center appointed Rachel Tan as the sole panelist in this matter on May 24, 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
Founded in 1873, Kohler Co. is a manufacturer of engines, generators and plumbing products, headquartered in the United States. The Complainant operates 44 manufacturing plants, 26 subsidiaries and affiliates and numerous sales offices throughout the world, including China.
The Complainant is the holder of worldwide trade mark registrations comprising of KOHLER including:
KOHLER United States Registration No. 590,052, registered on May 18, 1954, covering “internal combustion engines for driving generators and for general power application” in class 7;
KOHLER United States Registration No. 3,998,594, registered on July 19, 2011, covering, amongst others, “generators, namely, electric power generators” in class 7 and “switchgears” in class 9;
KOHLER Chinese Registration No. 142982, registered on December 25, 1980, covering, amongst others, “installations and apparatus for water supply and sanitary purposes and parts, fittings” in class 11; and
KOHLER Chinese Registration No. 8624696, registered on February 28, 2013, covering, amongst others, “apparatus for heating; sanitary apparatus and installations” in class 11.
(collectively referred to as the “KOHLER Trade Marks”).
The disputed domain name was registered on February 6, 2019. The disputed domain name currently does not resolve to any website, but in the past, initially redirected Internet users to a website entitled “Home World” which then resolved to the domain name , a website displaying adult content. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its prior KOHLER Trade Marks. The Complainant contends that the Respondent has no 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 fair use of the disputed domain name. The Complainant further contends that the disputed domain name was registered and is being used in bad faith, the Respondent chose the disputed domain name with actual or constructive knowledge of the Complainant’s trade mark, and is engaged in cybersquatting. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of Proceedings
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company from the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Complaint has been submitted in English. All of the Center’s case-related communications to the Parties have been transmitted in both English and Chinese. The Respondent has been informed by the Center that it would accept a Response in either English or Chinese. No foreseeable procedural benefit may be served by requiring Chinese to be the language of the proceeding. On the other hand, the proceeding may proceed expeditiously in English.
(c) The Respondent has failed to participate in the proceeding and has been notified of its default.
As one panel put it in the case Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191:
“…a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.” 6.2. Substantive Issues
On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a), (b) and (c) of the Policy, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has adduced sufficient evidence to demonstrate its established rights in the KOHLER Trade Marks.
The Panel notes that the disputed domain name fully encompasses the Complainant’s KOHLER word mark followed by the letters “gw” separated by a hyphen. In cases where a domain name incorporates the entirety of a trade mark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. Visually, the KOHLER word mark prominently appears at the beginning of the disputed domain name. The hyphen serves to distance it from the letters “gw” adding to the dominance of “kohler” in the disputed domain name, thereby increasing the likelihood of confusion. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is permissible for the Panel to ignore the Top-Level Domain (“TLD”) suffix, in this case, “.com”.
Given that the Complainant’s KOHLER word mark is instantly recognisable within the disputed domain name, the Panel finds that it is confusingly similar to the Complainant’s mark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In circumstances where the Complainant possesses exclusive rights to the KOHLER Trade Marks whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name for the following reasons:
(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “kohler-gw”;
(b) There is no indication to show that the Respondent is commonly known by the disputed domain name or has acquired trade mark rights to the term “kohler-gw”;
(c) The Complainant has submitted archived web pages demonstrating that the disputed domain name initially redirected users to a website which then resolved to another website containing graphic adult content. Such behaviour on the part of the Respondent manifestly demonstrates that the disputed domain name is not being used in connection with a bona fide offering or goods or services; and
(d) The Respondent has never been granted authorization to use the Complainant’s KOHLER Trade Marks.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith. The Panel concludes that based on the evidence submitted and all other relevant facts and circumstances, the Panel is satisfied that the Respondent has registered and used the disputed domain name in bad faith. In reaching its conclusion, the Panel had regard to the following circumstances:
(a) The Complainant’s KOHLER Trade Marks were registered well before the registration date of the disputed domain name. The Complainant has made extensive use of the KOHLER trade mark globally, including in China, where it has sizeable operations. A simple Internet search would have yielded a considerable amount of information about the Complainant, the worldwide reputation of its brands, and its business activities. It is thus inconceivable that the Respondent was unaware of the Complainant’s trade mark rights at the time of registering the disputed domain name.
(b) There is no evidence to show that the Respondent is using the disputed domain name in good faith for the genuine offering of goods or services. In stark contrast, the disputed domain name was previously used to attract Internet uses to a pornographic site. Previous UDRP panels have uniformly held that regardless of the motivation of the Respondent, the diversion of domain names to a pornographic site is itself consistent with the finding that the domain name was registered and is being used in bad faith. See Six Continents Hotels, Inc. v. Sewern Nowak,WIPO Case No. D2003-0022 and numerous other UDRP decisions.
(c) The disputed domain name currently resolves to an inactive website. The “passive holding” of a domain name does not prevent a finding of bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
(d) The Respondent has kept silent in the face of the Complainant’s allegations of bad faith.
Taking into account all the circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name, and considering the Respondent’s lack of rights or legitimate interests and the past misuse, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) of the Policy. 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.
Rachel Tan
Sole Panelist
Date: June 7, 2019
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