The Complainant is Kohler Co., United States of America (“United States”), represented by Taft, Stettinius & Hollister LLP, United States.
The Respondent is DotMedia Limited Hong Kong, China / yuechang Feng, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020 against DotMedia Limited. On January 16, 2020, the Center transmitted by email to the Registrar, KQW Inc, a request for registrar verification in connection with the disputed domain name. Despite of its several reminders, the Center did not receive any further reply from the Registrar, KQW Inc. On February 11, 2020, the Center engaged with the Internet Corporation for Assigned Names and Numbers (“ICANN”) Compliance in this matter. On March 30, 2020, the Registrar, KQW Inc., 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 March 30, 2020 providing the registrant and contact information disclosed by the Registrar, KQW Inc., and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 30, 2020 adding yuechang Feng as the Respondent in this proceeding. On March 30, 2020, the Center sent an email to the Parties and the Registrar, KQW Inc., regarding the expiry of the disputed domain name. On April 7, 2020, the Center received from KQW Inc. the Registrar’s confirmation that the disputed domain name will be placed in Registrar LOCK status until this UDRP proceeding is concluded. On March 30, 2020, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 30, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment. 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 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2020. Due to an issue with the notification of the Complaint, on May 5, 2020, the Center sent an email communication to the Parties giving the Respondent five days to indicate whether it wishes to participate in this proceeding. The Respondent did not comment by May 10, 2020. On May 4, 2020, the Center sent an email communication to the Registrars KQW, Inc. and MAFF Inc., noting that a WhoIs database search had shown that the registration had changed from KQW, Inc. to MAFF Inc., despite KQW, Inc. having advised the disputed domain name had been locked. The Center requested KQW and MAFF Inc. (1) to advise who the current registrar was and (2) to confirm the registrant information of the disputed domain name. On May 8, 2020, a holding email was received. On May 9, 2020, the Center received a reply from KQW, Inc. that the Registrar was now MAFF, Inc. and providing the WhoIs database details for the Respondent (other than the Respondent’s name). These were the same as had been provided previously. The Center responded on May 11, 2020, noting that according to InterNic KQW, Inc and MAFF, Inc. share the same contact details. The Center also noted that because KQW, Inc. had not advised that the Registrant’s name had changed the Registrant remained yuechang Feng. The Center appointed Douglas Clark as the sole panelist in this matter on May 14, 2020. 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 it 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 various KOHLER trademarks, including United States trademark No. 0094999 registered on January 20, 1914 in international class 11; United States trademark No. 0590052 registered on May 18, 1954 in international class 7; Chinese trademark No. 142982 registered on December 25, 1980 in class 18 and Chinese trademark No. 8624696 registered on February 28, 2013 in class 11. The Complaint was initially submitted against DotMedia Limited and later on amended to add yuechang Feng as the Respondent (an individual based in China). The disputed domain name was registered on April 15, 2019 and resolves to a page that has links to various pornography and online gambling platforms. 5. Parties’ Contentions A. Complainant Identical or confusingly similar The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark because it fully incorporates the KOHLER trademark as the dominant element in the disputed domain name. The numbers “120” and generic Top-Level Domain “.com” do not sufficiently differentiate the disputed domain name from the KOHLER trademark for a confusingly similar analysis. No rights or legitimate interests 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 or fair use of the disputed domain name. The Complainant asserts that the Respondent is not commonly known as the disputed domain name and has never used any trademark or services mark similar to the disputed domain name by which he or she may have come to be known. The Complainant claims that the Respondent’s use of the disputed domain name to direct users to a website containing adult-oriented pictures and videos tarnishes the Complainant’s mark and does not constitute a legitimate noncommercial or fair use of the disputed domain name. The Complainants submits that it has not granted any license, permission, or authorization to the Respondent by which it could own or use any domain name registration that are confusingly to the KHOLER trademark. Registered and used in bad faith The Complainant contends that the Respondent has registered the disputed domain name in bad faith because the disputed domain name is confusingly similar to the Complainant’s KOHLER trademark, and the Respondent has registered the disputed domain name despite its actual or constructive knowledge of the Complainant’s KOHLER trademark. The Complainant asserts that the Respondent’s use of the disputed domain name to direct Internet users who are looking for the Complainant’s products and services to adult-oriented content is further evidence of bad faith because it is indicative of an intent to harm the Complainant’s business. The Complainant claims that the Respondent is using the disputed domain name to capitalize Internet users’ efforts to find the Complainant’s website and such efforts to attract the Complainant’s customers and profit from their confusion constitutes bad faith registration and use of the disputed domain name. The Complainant contends that the Respondent’s use of the disputed domain name in commercial nature by displaying banners and advertisements of websites that offer goods and services are additional evidences of bad faith registration. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding The Language of the Registration Agreement is Chinese. The Complainant requested the language of the proceeding be in English on the grounds that (i) the Respondent is fully capable of proceeding in English as the disputed domain name is in English, not Chinese, evidencing the Respondent’s ability to communicate in English and (ii) translation of the Complaint would only unduly burden the Complainant and unnecessarily delay this proceeding. The Respondent did not respond to this request. Paragraph 11(a) of the Rules provides that: “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 Center made a preliminary determination to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Chinese; 3) appoint a Panel familiar with both languages mentioned above, if available. The final determination of the language of the proceeding lies with this Panel. The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”. As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Panel would have accepted a Response in Chinese, but none was filed. These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2 Change of Domain Name Registrar Subsequent to Filling of Complaint Paragraph 8(b) of the UDRP provides that: “You may not transfer your domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of our principal place of business) after such proceeding is concluded. You may transfer administration of your domain name registration to another registrar during a pending court action or arbitration, provided that the domain name you have registered with us shall continue to be subject to the proceedings commenced against you in accordance with the terms of this Policy. In the event that you transfer a domain name registration to us during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred.” Paragraph 1 of the Rules defines a “Registrar” to be “the entity with which the Respondent has registered a domain name that is the subject of a complaint”. In this case, the entity with which the Respondent has registered the disputed domain name has changed from KQW, Inc. to MAFF Inc. The Panel is aware that KQW, Inc. and MAFF Inc. are sharing the same contact details. The Panel notes that the issue of the possible breach of paragraph 8(b) of the Policy does not materially alter the Panel’s substantive determination under the three elements of the paragraph 4(a) of the Policy (also noting that ICANN’s Policy on Transfer of Registrations between Registrars, and the Registrar Transfer Dispute Resolution Policy may be applicable regarding the specific issue of the change of Registrar). The Panel further notes that the UDRP applies to the disputed domain name (and accordingly, that the Registrar MAFF Inc. shall proceed to implement any decision in accordance with paragraph 4(k) of the Policy). The Panel determines that as KQW, Inc. and MAFF Inc. are related, that MAFF, Inc. has been given notice of these proceedings as Registrar and shall implement any decision of the Panel. 6.3 Substantive Issues A. Identical or Confusingly Similar The Panel finds the disputed domain name The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides: “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.” The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent has no business or any kind of relationships (i.e., licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith Based on the evidence, the Panel has no hesitation in finding that the disputed domain name The Complainant’s KOHLER trademark was registered in United States and China long before the registration of the disputed domain name. The Panel finds that the Respondent could not have chosen and registered the disputed domain names in good faith without having been aware of the Complainant especially given its reputation and extensive presence worldwide. The disputed domain name resolves to a website appearing to provide links to pornography and online gambling services and thereby generating click through revenue. The disputed domain name is being used to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s KOHLER trademark as to the source sponsorship, affiliation, or endorsement of the services of the website, which falls into paragraph 4(b)(iv) of the Policy. Under all the circumstances of this case, the Panel is satisfied that the Respondent registered and has used the disputed domain name in bad faith. For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied. 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 Douglas Clark
Sole Panelist
Date: June 8, 2020
Full & Egal Universal Law Academy