The Complainant is Kohler Co., United States of America (“United States”), represented by Taft, Stettinius & Hollister, United States.
The Respondent is Steven jiang, China. 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 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 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 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint (the “WIPO Notice”). The Complainant filed an amended Complaint on May 12, 2021. The Center received three emails from two senders who appear to be related to a company called “Chica Dragon Sink Factory” on May 11, 13 and 14, 2021, respectively, asking for explanation about the dispute, and claiming to have had registered the disputed domain name through the broker company called “Ecer”, however, the disputed domain name has not been transferred from “Ecer” to them, and that they have instructed “Ecer” to “cancel all website of [the disputed domain name] and give up this domain name’s rights.” The Center sent an email to the aforementioned two senders on May 17, 2021 inviting them to identify themselves, clarify their relationship (if any) with the Respondent, and to provide information sufficient to verify such relationship. The Complainant submitted its request by email on May 19, 2021 that the proceeding be suspended in order to explore possible settlement. Accordingly, on the same day, the Center notified the Parties that the proceeding was suspended until June 18, 2021. On June 18, 2021, the Complainant transmitted its request that the proceeding be reinstituted. The Center notified the Parties that the proceeding was reinstituted as of June 21, 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 June 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2021. Other than the aforementioned emails from the senders related to the company “Chica Dragon Sink Factory”, the Center did not receive any email communication or response from the Respondent. Accordingly, the Center notified the Parties on July 12, 2021 that the Center would proceed to panel appointment. On July 16, 2021, the Center received an email from a sender who appears to be related to the broker company “Ecer” in which she “asked about the specific procedures”. On the same day, the Center requested this sender to identify herself, clarify her relationship (if any) to the Respondent, and to provide information sufficient to verify such relationship. The Center received an email from another sender who also appears to be related to “Ecer” on July 20, 2021, indicating after communicating with their client, the client had decided to give up the ownership of the disputed domain name and “Ecer” had also decided to give up the disputed domain name; therefore the sender asked the Center to specify the procedures on how to proceed. The Center appointed John Swinson as the sole panelist in this matter on July 22, 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 manufacturing business, that is well known for its kitchen and bath products. The Complainant was founded in 1873. The Complainant owns the longstanding United States trademark registration for KOHLER, United States registration No. 94999, registered on January 20, 1914, as well as other trademark registrations in the United States and in other countries. For example, the Complainant owns Chinese trademark registration No. 142982, registered on December 25, 1980, for KOHLER. The Respondent did not file a response, so little is known about the Respondent. The Respondent appears to have been a party in a prior UDRP dispute: Velcro BVBA v. Steven Jiang,WIPO Case No. D2016-0714. The disputed domain name was registered on August 15, 2019. At one point in time, the disputed domain name resolved to the website with a photo of the Shenzhen Longgang Chica Dragon Metal Factory, which advertised products that were of a similar type to the Complainant’s products such as sinks and faucets. Under the “About Us” section, it indicated “Chica Dra[g]on Sink Factory has been an industry leader […].” Currently, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions: The Complainant is a market leader and offers products under the highly recognizable Kohler brand. The Complainant provides kitchen and bath products and supplies, and has sales offices on every continent but Antarctica. The Complainant has longstanding trademark registrations for KOHLER (including those set out in section 4 above). The disputed domain name is confusingly similar to the KOHLER trademark because it fully incorporates this trademark as the dominant element in the disputed domain name. Adding common industry terms “kitchen” and “sink” do not sufficiently differentiate the disputed domain name from the KOHLER trademark. The Respondent lacks 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 Respondent continues to refer to itself in the WhoIs database as “blank” and has apparently referred to itself as “Steven jiang” as per the WIPO Notice identifying this additional name under which the Respondent operates. The Respondent has never been commonly known as the disputed domain name and has never used any trademark similar to the disputed domain name by which he may have come to be known, other than the infringing use set out in the Complaint. The Complainant has not granted the Respondent any license, permission, or authorization by which it could own or use any domain name registration that is confusingly similar to any of the KOHLER trademarks. The Respondent has never operated any bona fide or legitimate business under the disputed domain name and is not making a protected noncommercial or fair use of the disputed domain name. The Respondent uses the disputed domain name to direct Internet users to the website for Shenzhen Longgang Chica Dragon Metal Factory, which advertises goods and services competitive with the Complainant’s goods and services in a manner that trades on the Complainant’s goodwill and is likely to confuse users as to affiliation with the Complainant and disrupt the Complainant’s business. The Respondent registered the disputed domain name with actual knowledge of the Complainant’s trademarks based on the Complainant’s registration of its trademarks with the Trademark Office in the United States, where the Complainant and the Registrar are located, and to where the Respondent’s acts of cybersquatting are directed. There is no reason for the Respondent to have registered the disputed domain name other than to trade-off of the reputation and goodwill of the Complainant’s trademark. The Respondent is currently using the disputed domain name to capitalize on Internet users’ efforts to find the Complainant’s website. Such efforts to attract the Complainant’s customers and profit from their confusion constitutes bad faith registration and use of the disputed domain name under paragraph 4(b)(iv) of the Policy. The Respondent has a history of registering domain names that include trademarks of well-known brands, or variations thereof. B. Respondent The Respondent did not reply to the Complainant’s contentions. As stated above in section 3, various emails were received by the Center but none of these included a formal response or were stated to be sent by or on behalf of the Respondent. At least one of these emails appeared to be sent by an employee of the China Dragon Sink Factory. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response. Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar The Complainant has clearly proven ownership of numerous long-standing registered trademarks for KOHLER. This is a well-known trademark. The question that then arises is whether the disputed domain name is confusingly similar to the KOHLER trademark. The disputed domain name captures, in its entirety, the Complainant’s KOHLER trademark and simply adds the relevant term “kitchen sink” to the end of the trademark. The mere addition of this term to the Complainant’s trademark does not negate the confusing similarity between the disputed domain name and the Complainant’s trademark under the Policy. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms usually does not prevent a finding of confusing similarity under the first element. The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s KOHLER trademark, disregarding the Top-Level Domain (“TLD”) “.com”. The Complainant succeeds on the first element of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case. The Panel concludes that none of the circumstances listed in paragraph 4(c) of the Policy apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the KOHLER trademark. The Complainant has rights in the KOHLER trademark which clearly predate the Respondent’s registration of the disputed domain name. There is no evidence that the Respondent is commonly known by the disputed domain name; to the contrary, the evidence points to the Respondent using the disputed domain name to divert Internet traffic to the Respondent’s competing website. The Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the disputed domain name. The Panel notes, but does not need to rely upon, emails sent to the Center that appear to be from people associated with the Chica Dragon Sink Factory. These emails suggest that the disputed domain name was registered by mistake, and that it should be cancelled or transferred to the Complainant. The Complainant succeeds on the second element of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain name in bad faith. At one point in time, the disputed domain name resolved to a website which promoted products that were competitive to the Complainant’s products. The disputed domain name includes the Complainant’s famous trademark and words that relate to the Complainant’s products, namely sinks used in a kitchen. This is unlikely to be a coincidence. In these circumstances, it is reasonable to conclude that the Respondent was aware of the Complainant’s trademark when the Respondent registered the disputed domain name. The Panel considers it likely that the Respondent registered and is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This is bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. Thus, for the above reasons, the Panel concludes that the registration and use of the disputed domain name was in bad faith. The fact that the website to which the disputed domain name resolves is currently inactive does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant succeeds on the third element of the Policy in relation to the disputed domain name. 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 John Swinson
Sole Panelist
Date: August 5, 2021
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