Complainant is Kohler Co., United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
Respondent is Rajeev Jain, Mahalaxmi Valves Pvt Ltd, India. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2020. On September 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 2, 2020. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 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 Complainant is a company organized under the laws of the United States that is active in various industries, e.g., in the production of plumbing products, including valve products. Complainant is the registered owner of various trademarks related to its company name and brand “Kohler”, e.g., the following with protection for the territory of India where Respondent apparently is located: - Word mark KOHLER, Intellectual Property Office of India, registration number: 676422, registration date: August 11, 1995, status: active; - Word Mark KOHLER, Intellectual Property Office of India, registration number: 880544, registration date: October 7, 1999, status: active. Complainant also owns the domain name Respondent, according to the WhoIs Information for the disputed domain names, is a resident of India who first registered the disputed domain names Complainant requests that the disputed domain names be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to be an international market leader, inter alia, in the valve products’ business and to have made extensive use of its KOHLER trademark for many years which is why it has meanwhile become famous not only in the United States, but also in many countries around the world. Complainant submits that the disputed domain names are confusingly similar to Complainant’s KOHLER trademark as they fully incorporate the latter as their dominant element. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain names since (1) Respondent has never been commonly known by any KOHLER trademark nor any variations thereof, (2) Complainant is a direct competitor of Respondent and has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s KOHLER trademark, and (3) Respondent is using the disputed domain names to re-direct them to a website that offers, for sale, goods and services in competition with those of Complainant, thereby trading on Complainant’s goodwill and likely confusing users as to an affiliation of the Parties. Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith since (1) Respondent registered the disputed domain names with actual knowledge of Complainant’s KOHLER trademarks given that the Parties are direct competitors in the valve products’ business, (2) there is no apparent reason for Respondent to have registered the disputed domain names other than to trade off of the reputation and goodwill of Complainant’s KOHLER trademark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) That the disputed domain names have been registered and are being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent's failure to submit a Response as it considers appropriate. A. Identical or Confusingly Similar The Panel concludes that the disputed domain names are confusingly similar to the KOHLER trademark in which Complainant has rights. The disputed domain names all incorporate the KOHLER trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive term “real” in the disputed domain name Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain names, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain. Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use its KOHLER trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain names, and Respondent does not appear to have any trademark rights associated with the term “Kohler” on its own. Finally, all of the disputed domain names resolve to Respondent’s commercially active website at “www.rnvalves.com”, whereby Respondent is one of Complainant’s direct competitors and offers valve products that are directly competing with those of Complainant. Such use of the disputed domain names obviously neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview, Section 2.1). Given that Respondent has defaulted, it has not met that burden. The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain names and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain names were registered and are being used by Respondent in bad faith. The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s valve products’ business and its rights in the KOHLER trademark (notwithstanding the claimed international reputation of this trademark beyond the territory of the United States) when registering the disputed domain names and that the latter are clearly directed thereto. Moreover, using the disputed domain names to resolve them to a website offering valve products that are in direct competition with those of Complainant, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s KOHLER trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 Stephanie G. Hartung
Sole Panelist
Date: November 24, 2020
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