WIPO Domain Name Decision D2021-1809 for kohlerhanoi.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kohler Co. v. Tran Thi Hong1 Case No. D2021-1809 1. The Parties

The Complainant is Kohler Co., United States of America (“United States” or “U.S.”), represented by Taft, Stettinius & Hollister, United States.

The Respondent is Tran Thi Hong, Viet Nam. 2. The Domain Name and Registrar

The disputed domain name (the “Disputed Domain Name”) is registered with Mat Bao Corporation (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2021. On June 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 10, 2021, 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.

On June 10, 2021, the Center transmitted an email in English and Vietnamese to the Parties regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the Registration Agreement for the Disputed Domain Name is Vietnamese. The Complainant confirmed the request that English be the language of the proceeding on June 11, 2021. The Respondent was requested to submit her comments by June 15, 2021. On June 14, 2021, the Respondent submitted that she is Vietnamese and does not understand English. And she had no intention to participate in the proceeding.

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 in both English and Vietnamese 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. On July 12, 2021, the Center informed the Parties that it would proceed to appoint a panel.

The Center appointed Pham Nghiem Xuan Bac 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, Kohler Co., is a United States-based company that is a market leader of kitchen, bath products and supplies sold under the trademarks KOHLER. The Complainant was founded in 1873 and now its worldwide business includes 44 manufacturing plants, 26 subsidiaries and affiliates, and dozens of sales offices over the world.

The Complainant’s trademarks KOHLER have been registered for goods in many classes, including class 11 in a variety of countries under a number of trademark registrations, including but not limited to the U.S. trademark No. 0094999 registered on January 20, 1914; the U.S. trademark No. 3352028 registered on December 11, 2007; the Vietnamese trademark No. 101686 registered on May 22, 2008.

The Disputed Domain Name was created on February 27, 2020. As of the date of this Decision, the Disputed Domain Name was resolving to a third party’s website offering hosting services. However, according to the evidence submitted by the Complainant, the Disputed Domain Name used to resolve to a web shop, via which the kitchen and bath products under the Complainant’s KOHLER trademarks were advertised and offered for sale. 5. Parties’ Contentions A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

First, the Complainant contends that the Complainant is the registered owner of trademark registrations for KOHLER in numerous jurisdictions. Further, the Complainant submits that its trademarks KOHLER have become famous in many countries due to the extensive use and registration of the KOHLER family of marks around the world.

Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the trademarks KOHLER owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademarks KOHLER in its entirety, and the addition of the geographical term “Hanoi” could not dispel any likelihood of confusion. In contrast, the addition of the geographic term “Hanoi” makes the confusion more likely as it confuses consumers into thinking that the Disputed Domain Name is associated with the Complainant and their business in Viet Nam.

Finally, the Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” in the Disputed Domain Name does not add any distinctiveness to the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant argues that 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. Also, the Complainant contends that the Respondent has never been commonly known as and has never used any trademark or service mark similar to the Disputed Domain Name by which the Respondent may have come to be known, other than the use of the Disputed Domain Name.

Second, the Complainant submits that the Complainant has not granted the Respondent any license, permission, authorization, or any other contractual relationship by which the Respondent could own or use any domain name registration that is confusingly similar to the trademarks KOHLER.

Third, the Complainant contends that the Respondent uses the Disputed Domain Name to impersonate the Complainant and, therefore, such use does not constitute a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, the Complainant argues that the Respondent’s use of the famous trademarks KOHLER in the Disputed Domain Name is an infringing use of the Complainant’s trademarks, which cannot give rise to a right or legitimate interest of the Respondent. Further, the Complainant contends that the Respondent purposely intended to take advantage of the fame associated with the Complainant and its KOHLER trademarks.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant contends that the Respondent registered the Disputed Domain Name with actual knowledge of the Complainant’s trademarks KOHLER and, therefore, the Respondent’s registration of a confusingly similar domain name evidences bad faith registration. Further, even if the Respondent argues that she was unaware of the Complainant’s rights in the trademarks KOHLER, the Respondent should have conducted a preliminary trademark search or general browser search, which would have found the Complainant’s trademark registrations for KOHLER as well as the Complainant’s use of the trademarks KOHLER.

Second, the Complainant argues that the Respondent registered the Disputed Domain Name to trade off the reputation and goodwill of the Complainant’s trademarks, which evidences bad faith registration and use.

Third, the Complainant contends that the Respondent’s use of the Disputed Domain Name creates an immediate potential false association with the Complainant and a high degree of initial and stayed confusion. The Respondent’s impersonation of the Complainant also constitutes bad faith.

Finally, the Complainant contends that the Respondent is using the Disputed Domain Name to capitalize on Internet users’ efforts to find the Complainant’s website and, such efforts constitute bad faith registration and use of the Disputed Domain Name.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent

The Respondent did not formally reply to the Complainant’s contentions.

On June 14, 2021, the Respondent sent an informal email in Vietnamese to the Center, contending that she did not have intention to participate in the proceeding. In addition, the Respondent stated that she is Vietnamese and does not understand English and, therefore, she could not understand the matter and could not reply to the emails. 6. Discussion and Findings A. Procedural Issues

(i) Language of the Proceeding

The Complaint was filed in English. However, the Registrar confirmed that the language of the Registration Agreement is Vietnamese.

As the Complaint was filed in English, the Center, in its notification dated June 10, 2021, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) submit the Complaint translated into Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding by June 13, 2021.

On June 11, 2021, the Complainant confirmed its request that English be the language of the proceeding.

On June 14, 2021, the Respondent submitted that she did not understand English.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the Parties’ level of comfortability with each language, the expenses to be incurred, and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the fact that the Complainant, an American entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation;

(ii) the English language is popular in Viet Nam, where the Respondent resides, and as shown in Annex 5 of the Complaint that the website’s contents under the Disputed Domain Name were in English; these suggest to the Panel that the Respondent has sufficient knowledge of the English language and be able to communicate in English.

Therefore, for the purpose of easy comprehension of the Complainant (ultimately, the party mainly taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English.

(ii) The Respondent’s Failure to file a Formal Response

As described above, an informal email from the Respondent was received by the Center on June 14, 2021. Although the Respondent failed to file a formal Response, this does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn,WIPO Case No. D2010-1413, and M. Corentin Benoit Thiercelin v. CyberDeal, Inc.,WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s failure to file a formal Response. B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that the Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the trademarks KOHLER, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, the Panel finds that the Complainant has widely used the trademarks KOHLER for kitchen, bath products and supplies.

Second, the Disputed Domain Name comprises the Complainant's KOHLER trademarks, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademarks KOHLER is the addition of the suffix “hanoi” which refers to the name of the capital of Viet Nam where the Respondent resides.

The Panel finds that “kohler” remains clearly recognizable in the Disputed Domain Name. It is well established that the addition of a geographical identifier does not prevent a finding of confusing similarity, as it was found in previous UDRP decisions (see, e.g., International Business Machines Corporation v. Le Van Hai,WIPO Case No. D2019-3000; Philip Morris Products S.A. v. Nguyen Van Thanh,WIPO Case No. D2019-1867; Supercell Oy v. See Privacy Guardian.org / Mediastack,WIPO Case No. D2017-2177; Johnson & Johnson v. Tung Nguyen, WIPO Case No. D2017-1635; SAP AG v. Subba Rao Parvathaneni,WIPO Case No. D2010-1813).

Finally, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc.,WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).

Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s KOHLER trademarks, and paragraph 4(a)(i) of the Policy is established. C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Complainant has made a prima facie evidence on that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent did not refute the Complainant’s contentions.

The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the complainant, once a prima facie case is made, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating her rights or legitimate interests in the Disputed Domain Name (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited,WIPO Case No. D2001-0121). In this instant case, the Panel finds that the Respondent has failed to meet that burden since no formal Response was submitted providing arguments or evidence to the contrary.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s trademarks KOHLER has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “kohler”. Thus, the Panel finds that the Respondent has no rights in the trademarks KOHLER.

A reseller or distributor may be making a bona fide offering of goods or services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc,WIPO Case No. D2001-0903 (“Oki Data”), including:

- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods or services (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately and prominently disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in domain names that reflect the trademark, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, it is proven and evidenced by the Complainant that the Disputed Domain Name used to resolve to an online shop advertising and selling bath and kitchen products under the Complainant’s trademarks KOHLER, as shown in the Annex 5 of the Complaint. Further, the Panel conducted an independent search on “www.web.archive.org” and found that the Disputed Domain Name, at least on February 27, 2021, resolved to an online shop advertising and selling bath and kitchen products under the Complainant’s trademarks KOHLER. On such website, the Panel found that the Respondent did not place any statement or disclaimer disclosing accurately and prominently its relationship with the Complainant. In addition, the Panel found that the Respondent advertised the mattress products under a third party’s brand on the website under the Disputed Domain Name.

With such a view, the Panel finds that the use of the Disputed Domain Name does not meet the Oki Data criteria and thus, does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “kohlerhanoi” or that the Respondent has any right in it.

Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any legitimate noncommercial or fair use of the Disputed Domain Name.

Furthermore, the nature of the Disputed Domain Name, consisting of the Complainant’s trademarks KOHLER and a geographical term “hanoi”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established. D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, including:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s bad faith registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s KOHLER trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s KOHLER trademarks have been put in use for a long period of time and has gained certain reputation in the sector of kitchen, bath products and supplies. The Complainant’s KOHLER trademarks predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the Complainant’s KOHLER trademarks in its entirety, adding the geographical term “hanoi” at the end. Given the extensive use of the KOHLER trademarks for kitchen, bath products and supplies by the Complainant, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its KOHLER trademarks when she registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the Complainant’s goodwill and the reputation of the Complainant’s KOHLER trademarks.

It is well proven and evidenced by the Complainant that the website under the Disputed Domain Name used to offer the kitchen, bath products and supplies under the Complainant’s KOHLER trademarks. Also, the Respondent has used the Complainant’s KOHLER trademarks as a uniquely distinctive part in the Disputed Domain Name.

The Panel takes the view that any Internet users seeking to purchase the Complainant’s Kohler products would likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. The Panel therefore finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of her website or location or of a product or service on her website or location, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

On the date of this Decision, the Panel accessed the Disputed Domain Name and found that it was resolving to a third party’s website offering hosting services. However, it does not change the Panel’s finding of bad faith of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established. 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 be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: August 3, 2021

1 The Panel notes that the Registrar has confirmed that the registrant of the disputed domain name is “Tran Thi Hong” while the WhoIs database shows the registrant of the disputed domain name as “Ba Tran Thi Hong”. The Panel further notes that the contact details of the registrant as confirmed by the Registrar are the same as those in the WhoIs database. The Panel would refer when using the term Respondent to the registrant of the disputed domain name.

Full & Egal Universal Law Academy