The Complainant is Kohler Co., United States of America, represented by Taft, Stettinius & Hollister, United States of America.
The Respondent is Registration Private / Domains By Proxy, LLC, DomainsByProxy.com, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 4, 2021. On May 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2021, 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 May 6, 2021 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 May 11, 2021. 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 of the Complaint, and the proceedings commenced on May 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021. The Center appointed Andrea Mondini as the sole panelist in this matter on June 30, 2021. 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 is a market leader of kitchen and bath products and supplies sold under the trademark KOHLER. Founded in 1873, the Complainant today has 44 manufacturing plants and 26 subsidiaries worldwide. The Complainant owns numerous registrations for the trademark KOHLER, including United States registration no. 94999 registered on January 20, 1914 and United States registration no. 3352028, registered December 11, 2007. The disputed domain name was registered on May 26, 2020, and resolved to a page which appears to be a replica of the Complainant’s website. 5. Parties’ Contentions A. Complainant The Complainant in essence contends the following: The KOHLER mark is famous due to its extensive use and registration. The disputed domain name incorporates the KOHLER mark in its entirety. The addition of the letter “e” does not dispel the confusing similarity. The Complainant has not licensed or otherwise authorized the Respondent to use the KOHLER trademark. The Respondent therefore has no rights or legitimate interests in the disputed domain name, or any rights in the KOHLER trademarks, or association with the Complainant whatsoever. The disputed domain name has been registered in bad faith because, given the Complainant’s worldwide reputation, the Respondent was or should have been aware of the KOHLER marks prior to registering the disputed domain name. The Respondent used the disputed domain name in bad faith by previously using it to redirect Internet users to a website advertising goods and services directly competing with the Complainant’s goods and services, and by later using it to redirect to what appears to be a replica of the Complainant’s website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) The disputed domain name is identical or confusingly similar to the 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 The Complainant has shown that it holds numerous registrations for the trademark KOHLER, including United States registration no. 94999 registered on January 20, 1914 and United States registration no. 3352028, registered December 11, 2007. The Panel finds that the disputed domain name is confusingly similar to the Complainant’ trademark, because it incorporates in its entirety the trademark KOHLER. The addition of the character “e” does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant contends, credibly, that it has not authorized the Respondent to register or use the Complainant’s trademark KOHLER in the disputed domain name, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has demonstrated that the KOHLER mark is distinctive and well-known and that the Respondent uses it in connection with products competing with the Complainant’s products. Noting also the composition of the disputed domain name, the Panel thus concludes that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith. The Complainant has shown that Respondent used the disputed domain name by previously using it to redirect Internet users to a website advertising goods and services directly competing with the Complainant’s goods and services, and by later using it to redirect to what appears to be a replica of the Complainant’s website “www.kohler.com”. The Panel holds that both the prior and the current use are evidence of bad faith. The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 Andrea Mondini
Sole Panelist
Date: July 14, 2021
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