WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohler Co. v. Protection of Private Person / Timur Habirov

Case No. D2018-2931

1. The Parties

The Complainant is Kohler Co. of Kohler, Wisconsin, United States of America (“United States”), represented by Winston & Strawn LLP, United States.

The Respondent is Protection of Private Person of Moscow, Russian Federation / Timur Habirov of Sterlitamak, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <kohler-sdmo-power.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 2018, 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 December 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email in English and Russian regarding the language of the proceedings. The Complainant filed an amended Complaint on December 28, 2018 and requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings.

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 January 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2019.

The Center appointed Taras Kyslyy as the sole panelist in this matter on January 30, 2019. 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 the United States company founded in 1873 and using trademarks KOHLER and SDMO since 1920 and 1966 respectively for engines and power supply. The Complainant operates via a global distribution network. The Complainant owns KOHLER trademark registrations as follows:

- the United States registration No. 590052 registered on May 18, 1954,

- the United States registration No. 3998594 registered on July 19, 2011.

The Complainant also owns SDMO trademark, the European Union Trademark Registration No. 011868478 registered on December 19, 2013.

The disputed domain name was registered on March 31, 2018 and currently resolves to inactive webpage. Previously it resolved to a website presenting the Complainant’s products under the Complainant’s trademarks.

5. Parties’ Contentions

A. Complainant

Confusingly similar. The disputed domain name incorporates the Complainant’s trademarks adding descriptive and industry-relevant word “power” and the generic top-level domain (“gTLD”) “.com”, which does not preclude confusing similarity.

No rights or legitimate interests. The Respondent is not making bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not commonly known by the disputed domain name. No license, permit or authorization was granted to the Respondent to use the disputed domain name.

Registered and used in bad faith. The Respondent knew of the Complainant’s trademarks while registering the disputed domain name. The Respondent registered the disputed domain name to trade off the reputation and goodwill of the Complainant’s trademarks and uses it to pass itself off as the Complainant. The Respondent attracts Complainant’s customers and profit from their confusion. The Respondent used privacy to conceal its identity.

B. Respondent

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

6. Discussion and Findings

A. Language of Proceedings

The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.

However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).

In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.

The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since the disputed domain name is comprised of English terms. The Panel notes that the disputed domain name used to resolve to a website with some part of content in English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.

The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.

The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.

Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.

B. Identical or Confusingly Similar

The gTLD “.com” in the disputed domain name is viewed as a standard registration requirement and may be disregarded for the purposes of the confusing similarity test (see, e.g., Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing.

According to section 1.8 of the WIPO Overview 3.0 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

The disputed domain name incorporates the Complainant’s trademarks in its entirety adding a descriptive term “power” and gTLD “.com”, which do not preclude confusing similarity with the Complainant’s trademarks.

Considering the above the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate a right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain name used to redirect Internet users to a website with logos similar to the Complainant’s trademarks and designed similarly to the Complainant’s website to make the Internet users believe that they actually access the Complainant’s website. Past UDRP panels confirmed that such actions prove registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).

Considering the above the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted Complainant’s prior registered and famous trademarks, which confirms bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: 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. In this case, the disputed domain name was resolving to a website featuring the Complainant’s trademarks and falsely pretended to be Complainant’s local website or at least authorized by the Complainant to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

The Respondent ignored its possibility to comment to the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain name.

Moreover, the Respondent used a privacy service to register the disputed domain name. According to section 3.6 of the WIPO Overview 3.0, the use of a privacy or proxy service merely to avoid being notified of a UDRP proceeding, may support an inference of bad faith; a respondent filing a response may refute such inference. However, no such response was provided by the Respondent. The Panel finds that such use of the privacy service here confirms registration of the disputed domain name in bad faith.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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, <kohler-sdmo-power.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: February 11, 2019