WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohler Co. v. 陈铭豪(chenming hao)

Case No. D2019-2799

1. The Parties

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

The Respondent is 陈铭豪(chenming hao), China.

2. The Domain Name and Registrar

The disputed domain name <kohlerapp.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2019. On November 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 27, 2019, 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 November 27, 2019 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 in English on December 2, 2019.

On November 27, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on November 27, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2020.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 13, 2020. 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 an American manufacturing company founded in 1873 known for plumbing products, furniture, cabinetry, tiles, engines and generators. The Complainant’s business worldwide includes 44 manufacturing plants, 26 subsidiaries and affiliates and dozens of sales offices over several continents.

The Complainant is the owner of numerous trademarks worldwide for the KOHLER marks, including but not limited to the following:

- KOHLER (Registration No. 0094999) registered in USA on January 20, 1914;

- KOHLER (Registration No. 0590052) registered in USA on May 18, 1954;

- KOHLER (Registration No. 142982) registered in China on December 25, 1980;

- KOHLER (Registration No. 8624696) registered in China on February 28, 2013.

The disputed domain name was registered on March 24, 2017 and presently resolves to an active pornography website promoting adult services and gambling.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain name is confusingly similar to the KOHLER mark on the basis that the disputed domain name wholly incorporates the KOHLER mark and only differs from the KOHLER mark by the addition of the term “app” and the genetic Top-Level Domain (“gTLD”) “.com”.

The Complainant also argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent was not identified in the WhoIs database prior to verification by the Registrar. In addition, the Respondent is not affiliated with the Complainant nor did the Complainant license or authorize the Respondent to use the KOHLER mark.

The Complainant further argues that the disputed domain name has been registered and is being used in bad faith as the Respondent should have known of the Complainant’s KOHLER mark at the time of registration of the disputed domain name. The Complainant also asserts that the disputed domain name is being used in bad faith as the disputed domain name resolves to a pornographic website promoting adult services and gambling thereby tarnishing the Complainant’s reputation and goodwill.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceedings

Paragraph 11 of the Rules provides that:

“(a) 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 language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004.)

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain name consists of Latin letters, rather than Chinese characters;

(ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and

(iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Having regard to the above, the Panel determines that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

The Complainant has provided evidence of its numerous trademark registrations for the KOHLER mark in numerous jurisdictions.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <kohlerapp.com> incorporates the Complainant’s KOHLER mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The disputed domain name differs from the KOHLER mark by the addition of the term “app” and the gTLD suffix “.com”.

It is well-established where a complainant’s 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 (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu Luca WIPO Case No. D2016-2582). Thus, the addition of the term “app” does not avoid confusing similarity with the Complainant’s KOHLER mark.

It is also established that the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD “.com” is without significance and does not prevent a finding of confusing similarity in the present case.

In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns numerous trademark registrations in many jurisdictions long before the disputed domain name was registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s KOHLER mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database are redacted for privacy. Although the WhoIs record is redacted for privacy, the Registrar has confirmed that the disputed domain name is registered under the Respondent 陈铭豪(chenming hao) which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3).

In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence showing that the disputed domain name redirects to a pornographic page promoting adult services and gambling. It is well-established that the use of a domain name for posting of pornographic content and/or related services constitute evidence of bad faith registration and use of a domain name (see Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295 (“The posting of pornographic contents on a web site under a domain name that corresponds to a third party’s mark is a bad faith use of a domain name”); America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (“The use of AOL as part of a domain name offering pornographic products and services certainly ‘tarnishes’ Complainant’s existing marks, which is also evidence of bad faith”); Valor Econômico S.A. v. Daniel Allende, WIPO Case No. No. D2001-0523 (“Complainant has proved that Respondent linked the <valoreconomico.net> web page to adult content or pornographic sites. This is a typical bad faith use of the domain name.”); ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“The use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”); Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (“Preliminary, it is commonly understood, under WIPO case law, that whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”) Similarly, the Panel finds that the use of the disputed domain name in the present case constitutes evidence of bad faith registration and use of the disputed domain name.

Further, the disputed domain name is confusingly similar to the Complainant’s KOHLER mark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

In addition, the Respondent did not submit a Response in this proceeding. This may be further indications of the Respondent’s bad faith, which was considered by the Panel.

Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s use of the disputed domain name and the failure of the Respondent to submit a response, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 <kohlerapp.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: January 23, 2020