The Complainant is Kohler Co., United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Ernesto Rodriguez / Power Mower Corp., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2020. On May 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 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 May 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2020. The Respondent did not file a formal response with the Center, so the Center sent the Notification of Respondent Default on June 30, 2020. On that same day, the Center received an email message from the Respondent’s email address. The Center appointed Evan D. Brown as the sole panelist in this matter on July 13, 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 has been designing, manufacturing and selling engines since 1920. It owns a number of registrations for the mark KOHLER, including United States Reg. No. 590,052, issued on May 18, 1954. The disputed domain name was registered on April 5, 2016. The Respondent is a competitor of the Complainant and uses the disputed domain name to publish a website that offers for sale, and provides a link to another website that offers for sale, goods and services competitive with the Complainant’s goods and services. Notably, the website at the disputed domain name prominently displays the Complainant’s stylized mark in its header. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, that the disputed domain name was registered and is being used in bad faith. B. Respondent The Respondent did not formally respond to the Complaint. After the Center notified the parties of the Respondent’s default, however, the Center received an email message from the Respondent’s email address, stating the following: “This is the first we have heard about this matter. I have no idea what it is in reference to. We changed the name of out [sic.] Kholer [sic.] site long ago to be in compliance.” 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (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 disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the KOHLER mark by providing evidence of its numerous trademark registrations. The disputed domain name does not contain the Complainants’ exact mark KOHLER, but incorporates a slightly misspelled version of it (one that an Internet user could plausibly type if in a hurry or if uncertain of how to spell the word “Kohler”). This makes the disputed domain name confusingly similar to the Complainant’s mark. The presence of the words “engine” and “parts” in the disputed domain name do not reduce the confusing similarity. The Complainant has established this first element under the policy. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production to demonstrate rights or legitimate interests shifts to the Respondent. The Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. On this point, the Complainant asserts, among other things, that: - The Respondent is not making a bona fide legitimate, noncommercial or fair use of the disputed domain name. - The Respondent has never been commonly known by any variation of the KOHLER mark, nor has the Respondent legitimately used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than through infringing use. - The Complainant has not granted the Respondent any license, permission, or authorization by which the Respondent could own or use any domain name registrations that are confusingly similar to any of the KOHLER marks. - The Respondent has never operated any bona fide or legitimate business under the disputed domain name. Instead, the Respondent is using the disputed domain name to direct internet users to a website that offers for sale, and/or offers a link to another website that offers for sale, goods and services competitive with the Complainant’s goods and services. These facts make the Complainant’s prima facie showing. The Respondent has not provided any evidence to rebut this prima facie showing. The Panel finds that the Complainant has established this second element under the Policy. C. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”. The Respondent registered and is using the disputed domain name in bad faith. The Respondent’s cursory, informal email response (which the Panel, in its discretion, chooses to consider) establishes that the Respondent is aware of the Complainant and its marks. Accordingly, the Respondent intentionally targeted the Complainant when it registered the disputed domain name. And the way the Respondent has used the disputed domain name – to publish website that offers for sale, and provides a link to another website that offers for sale, goods and services competitive with the Complainant’s goods and services is a clear indication of bad faith use. Designing the website to prominently display the Complainant’s stylized mark in its header further underscores bad faith use. Accordingly, the Complainant has established this third element under 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, Evan D. Brown
Sole Panelist
Date: July 27, 2020
Full & Egal Universal Law Academy