The Complainant is Kohler Co., United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Jason LaBouve, United States. 2. The Domain Names and Registrar
The disputed domain names (the “Disputed Domain Names”) The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2020. On March 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On April 1, 2020, 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. 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 April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent sent an email to the Center on April 3, 2020, stating: “Please accept this email as confirmation that I have received the Complainant’s Notification of Complaint, Case No. D2020-0762. As requested, a response to the Complainant’s remedy will be communicated on or before the April 22, 2020 deadline.” The Center never received a formal response and notified the Parties of the commencement of Panel Appointment on April 24, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on April 29, 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 Founded in 1873, the Complainant is a manufacturing company best known for its plumbing products, but also manufactures furniture, cabinetry, tile, engines, and generators. The Complainant owns numerous federally registered trademarks through the United States Patent and Trademark Office (“the USPTO”), including, but not limited to: - KOHLER, United States Reg. No. 0094999, registered on January 20, 1914 in international class 13; The Disputed Domain Names were registered on the following dates: The Disputed Domain Names resolve to either parked pages under construction or pages with error messages and have no content. On January 28, 2020, Counsel for the Complainant called the Respondent and requested that the Disputed Domain Names be transferred to the Complainant. The Respondent said he registered the Disputed Domain Names because he had ideas to pitch to the Complainant and had recently applied for employment there. Counsel for the Complainant informed the Respondent that the Disputed Domain Names should not be used for employment negotiations. The Respondent said that he needed to speak with his lawyer and asked for time to respond. Counsel for the Complainant agreed that the Respondent could contact his lawyer and respond in several weeks. The Respondent, however, never responded, but instead registered additional Disputed Domain Names that incorporate the Complainant’s KOHLER Mark. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Names are confusingly similar to the Complainant’s trademark; The Complainant seeks the transfer of the Disputed Domain Names from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Names transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Names are confusingly similar to the KOHLER Mark. It is uncontroverted that the Complainant has established rights in the KOHLER Mark based on its many decades of use as well as its numerous registered trademarks for the KOHLER Mark in the USPTO. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the KOHLER Mark. The Disputed Domain Name The Panel concludes that based on the above, the Disputed Domain Names are confusingly similar to the KOHLER Mark in which the Complainant has rights. Numerous UDRP decisions have reiterated that the addition of a descriptive word to a trademark is insufficient to prevent confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923 (the addition of a descriptive or generic word to a trademark will not prevent a determination that the domain name at issue is confusingly similar). Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. As the Respondent did not respond to the Complaint, the Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the Disputed Domain Names to rebut the Complainant’s prima facie case. The Panel notes that, given the facts here, the Respondent would have been hard-pressed to furnish availing arguments, had it chosen to respond. In particular, there is no evidence in the record that the Respondent is in any way associated with the Complainant. The Respondent is not commonly known by the Disputed Domain Names, nor has the Complainant authorized, licensed, or otherwise permitted the Respondent to use the KOHLER Mark. The Respondent has no relationship, affiliation, connection, endorsement or association with the Complainant nor has the Complainant authorized the Respondent to use the KOHLER Mark in any way. Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and is using the Disputed Domain Names in bad faith to target the Complainant’s KOHLER Mark for commercial gain. Second, the Panel concludes that the Respondent had actual knowledge of the Complainant’s rights in its KOHLER Mark when registering the Disputed Domain Names. The Respondent admitted that he registered the Disputed Domain Names as a negotiating tool to acquire employment with the Complainant, evidence that the Respondent had actual knowledge of the Complainant. Further, the Respondent registered the Disputed Domain Names many decades after the Complainant first used and obtained its trademark registrations for the KOHLER Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its KOHLER Mark when registering the Disputed Domain Names. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name). Thus, the Respondent registered the Disputed Domain Names to associate itself with that of the Complainant and to profit from the Complainant’s reputation, thereby attracting Internet users to the Disputed Domain Names and the resolving websites, all supporting a finding of the Respondent’s bad faith registration and use. Finally, by using the Disputed Domain Names passively and having no content on the resolving landing pages, the Panel concludes that the Respondent registered and is using the Disputed Domain Names in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”. Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME,WIPO Case No. D2009-1335. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Names Lynda M. Braun
- KOHLER, United States Reg. No. 577392, registered on July 14, 1953 in international class 13; and
- KOHLER, United States Reg. No. 590052, registered on May 18, 1954 in international class 23 (collectively, the “KOHLER Mark”).
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
- the Disputed Domain Names were registered and are being used in bad faith.
Sole Panelist
Date: May 5, 2020
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