DECISION

Kohler Co. v. Chris Friedland d/b/a Faucet Direct Inc.

Claim Number: FA0207000115043

PARTIES

Complainant is Kohler Co., Kohler, WI (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Chris Friedland d/b/a Faucet Direct Inc., Chico, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <kohlerfaucets.com>, registered with Register.com.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 10, 2002; the Forum received a hard copy of the Complaint on July 11, 2002.

On July 12, 2002, Register.com confirmed by e-mail to the Forum that the domain name <kohlerfaucets.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 1, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@kohlerfaucets.com by e-mail.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <kohlerfaucets.com> domain name is confusingly similar to Complainant’s KOHLER mark.

           

Respondent has no rights or legitimate interests in the <kohlerfaucets.com>domain name.

Respondent registered and used the <kohlerfaucets.com> domain name in bad faith. 

B. Respondent

Respondent did not submit a formal Response in this proceeding.  Respondent’s submission stated its desire to transfer the domain name to Complainant.  Complainant, however, requested to continue the proceeding and Respondent has made no arguments or defense.

FINDINGS

Complainant provides evidence of trademark registration on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the KOHLER mark (Reg. Nos. 167,671; 577,392; 590,052; and 592,927).  Complainant also provides evidence of trademark application and registration worldwide for the KOHLER mark and marks with slight variations containing the KOHLER mark.

Complainant uses the KOHLER mark and related marks in association with plumbing and power systems products that are marketed and sold around the world.  Complainant also uses the KOHLER mark and related marks for other products and services, including furniture and accessories, cabinetry and tile, engines and generators, as well as resort, recreation, and real estate opportunities. 

Complainant’s KOHLER mark and related products are used extensively around the world, including in the United States, Europe, Australia, Japan, and South America, among others.  Due to the KOHLER mark’s established reputation and goodwill, the mark has become “famous under the laws of the United States and other relevant jurisdictions.” 

Respondent registered the <kohlerfaucets.com> domain name on December 4, 2000.  Respondent uses the domain name for a website that sells plumbing products, including Complainant’s products.  Respondent was never authorized by Complainant to use the KOHLER mark in the domain name or for any other purpose. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the KOHLER mark through registration with the USPTO and subsequent continuous use. 

Respondent’s <kohlerfaucets.com> domain name is confusingly similar to Complainant’s KOHLER mark.  The addition of the generic term “faucets,” which has a relation to products Complainant offers, does not detract from the presence of the KOHLER mark in the second level domain.  Further confusion arises with Respondent’s addition to the KOHLER mark because “faucets” refers to Complainant’s goods for which the KOHLER mark is registered.  Hence, the <kohlerfaucets.com> domain name is confusingly similar to Complainant’s KOHLER mark because the only addition to the mark is one that has an obvious relationship to Complainant’s business.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the <kohlerfaucets.com> domain name and Respondent’s failure to make any arguments, the Panel may presume that Respondent has no such rights or legitimate interests.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  Furthermore, because Respondent did not submit a formal Response, all reasonable inferences may be drawn in favor of Complainant.  See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <kohlerfaucets.com> domain name in association with a website that sells plumbing products, including Complainant’s KOHLER products.  Respondent’s website copies images from Complainant’s <kohler.com> website.  Respondent also placed Complainant’s customer service phone number on the infringing website, further creating consumer confusion.  Since Respondent offers the same products that Complainant does, Respondent conducts business in competition with Complainant.  Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services, nor does Respondent’s use represent a legitimate noncommercial or fair use.  Therefore, Respondent does not comply with Policy ¶¶ 4(c)(i) and (iii), respectively.  See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell Complainant’s goods without Complainant’s authority, as well as others’ goods is not bona fide use); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names <caterpillarparts.com> and <caterpillarspares.com> to suggest a connection or relationship, which does not exist, with Complainant's mark CATERPILLAR).

Respondent does not have any trademark applications or registrations for the KOHLER mark or any mark that contains the element KOHLER.  Complainant maintains that any use of the KOHLER mark by Respondent is unauthorized.  Complainant’s investigation revealed that Respondent’s <kohlerfaucets.com> domain name is not Respondent’s legal name.  The evidence shows that Respondent is only known as “Chris Friedland d/b/a Faucet Direct Inc.”  Therefore, Respondent has no legitimate rights and interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <kohlerfaucets.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

There is ample evidence that confirms Respondent had knowledge of Complainant’s famous KOHLER mark prior to registering the domain name, which contains Complainant’s entire mark.  Evidence of Respondent’s knowledge exists in Respondent’s use of the domain name to sell Complainant’s products and competing products, the KOHLER mark’s registration on the Principal Register of the USPTO, and the established goodwill of the KOHLER mark.  Registration of a domain name incorporating another entity’s mark, despite knowledge of that entity’s interest in the mark, represents bad faith registration.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).

Respondent uses the domain name in bad faith as a means to confuse and divert consumers away from Complainant for Respondent’s commercial benefit.  Respondent’s use of the domain name confuses Internet consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.  Therefore, Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also Fanuc Ltd v. Mach. Control Serv., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by selling used Fanuc parts and robots on website <fanuc.com> because customers visiting the site were confused as to the relationship between the Respondent and Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <kohlerfaucets.com> be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr,  Panelist

Dated: August 8, 2002

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