WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kohler Co. v. Whois Privacy Protection Service by MuuMuuDomain / Yoshiyuki Hirabayashi, Cercle Inc.
Case No. D2021-2357
1. The Parties
The Complainant is Kohler Co., United States of America (“United States” or “U.S.”), represented by Taft, Stettinius & Hollister, LLP, United States.
The Respondent is Whois Privacy Protection Service by MuuMuuDomain / Yoshiyuki Hirabayashi, Cercle Inc., Japan.
2. The Domain Name and Registrar
The disputed domain name <tokyo-kohler.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 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 July 31, 2021 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 August 5, 2021.
On July 31, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On August 2, 2021, the Complainant submitted a request that English be the language of the proceeding. 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 Japanese of the Complaint, and the proceedings commenced on August 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2021.
The Center appointed Haig Oghigian as the sole panelist in this matter on October 11, 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
This dispute concerns the following disputed domain name: <tokyo-kohler.com> registered with the Registrar on January 14, 2021. The disputed domain name previously resolved to a website advertising and promoting goods and services of third parties and currently resolves to a website showing nothing but the word “closed”.
It refers to the trademark KOHLER (the “Trademark”) first registered in the United States on January 20, 1914 (U.S. Reg. No. 0094999) and subsequently registered in the United States on December 11, 2007 in relations of other products (U.S. Reg. No. 3352028). The Trademark was also registered in Japan on June 15, 2007 (Japanese Reg. No. 5055109), (the “Kohler Marks”).
The Complainant is a manufacturing company and is the owner of the KOHLER Marks.
5. Parties’ Contentions
The following information has been taken from the Complaint.
The Complainant was founded in 1873. Its business consists of several industries, including kitchen and bath products and supplies.
The Complainant operates on all continents (except Antarctica) and has 44 manufacturing plants and 26 subsidiaries and affiliates throughout the world.
The KOHLER Marks represent to the worldwide consuming public the goods and services offered by Kohler.
The KOHLER Marks have become famous under the laws of the United States, Japan, and countries around the world. See Kohler Co. v. Phil Coons, FA0510000589518 (Dec. 29, 2005); see also Kohler Co. V. Tony Haryanto, FA1309001517638 (Oct. 5, 2013).
Further, the KOHLER Marks have also obtained the status of notorious marks, under the Paris Convention.
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s KOHLER Marks because it fully incorporates the KOHLER Marks as the dominate element in the disputed domain name.
The Complainant also alleges 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. Respondent, who according to the WHOIS database, is ‘Whois Privacy Protection Service by MuuMuuDomain’, has never been commonly known as ‘tokyo-kohler.com’ and has never used any trademark or service mark similar to the Disputed Domain by which he or she may have come to be known, other than the infringing use noted herein.”
Complaint, paragraph 1, section C.
Lastly, the Complainant alleges that the evidence demonstrates that the Respondent registered the disputed domain name in bad faith within the meaning of the Policy:
“given the construction of the Disputed Domain that consists of the KOHLER Marks in its entirety, and the content of the Disputed Domain promoting third party companies that claim an association with Complainant, it is clear that Respondent registered the Disputed Domain with actual knowledge of Complainant’s KOHLER Marks. Registration of a confusingly similar domain name despite such actual knowledge, without more, evidences bad faith registration within the meaning of Policy 4(a)(iii).”
Complaint, paragraph 1, section D.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel agrees with the contentions of the Complainant as follows.
For the complainant to be successful in its complaint, it must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel must decide the Complaint based on the statements and documents submitted and in accordance with the Rules and any rules and principles of law that it deems applicable. See paragraph 15 (a) of the Rules.
Paragraph 10 (d) of the Rules further states that “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Lastly, in accordance with paragraph 14 (b) of the Rules, “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
6.1. Preliminary Issue: Language of the Proceeding
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is Japanese. The Complainant requests that the language of the proceeding be English. The Respondent did not comment on the Complainant’s request.
In accordance with paragraph 11(a) of the Rules, the Panel finds that based on the Procedural History above as well as paragraphs 10(b) and (c) of the Rules, the appropriate language to be used in this proceeding including this decision is English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the KOHLER Marks. It is now trite law that a domain name that wholly incorporates a registered trademark is enough to conclude that there is confusing similarity. This conclusion must remain unchanged even if other words are added to the domain name. Hence, the addition of the word “Tokyo” to the disputed domain name in this case does not prevent a finding of confusing similarity. See Oki Data Ams., Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Hitachi, Ltd. v. Arthur Wrangle, WIPO Case No. D2005-1105.
The Panel agrees with the Complainant that the disputed domain name is identical or confusingly similar to the KOHLER Marks. The Panel is also of the view that the Complainant has demonstrated to the Panel’s satisfaction that is has the rights to the KOHLER Marks as per the registration of the KOHLER Marks and also of its commercial use.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a respondent, in order to demonstrate its rights or legitimate interests can, without limitation, refer to the following circumstances:
(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 non-commercial 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.
There is no evidence in this file that was adduced by the Respondent to demonstrate any rights or legitimate interests. The Respondent, having been duly notified of the Complaint and the present proceeding, has chosen not to reply to the contentions of the Complainant nor otherwise participated in this proceeding.
There is therefore no evidence that the Respondent was commonly known as “Kolher-Tokyo.com”. No evidence adduce in this file demonstrates that the Respondent has used any trademarks similar to the one used in the disputed domain name.
There is no evidence that would show that the Respondent was acting in accordance of any rights or legitimate interests upon registration of the disputed domain name.
There is also no evidence that would show that the Respondent had “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” (see paragraph 4(c) of the Policy referred above).
Therefore, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four examples of bad faith behavior. This list is not exhaustive.
Paragraph 4(b)(iv) of the Policy is the most relevant example for this case. The evidence adduced leads the Panel to conclude that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users” to its web site “by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’ web site and its products. See paragraph 4(b)(iv) of the Policy.
The Panel agrees with the contention of the Complainant that “There is no reason for Respondent to have registered the Disputed Domain other than to trade-off of the reputation and goodwill of Complainant’s reputable KOHLER Marks. As such, the nature of the domain name itself evidences bad faith registration and use”. See Charles Jorden Holding AG v. AAIM, WIPO Case No. D2000-0403.
The Respondent’s use of a privacy service to register the disputed domain name is a further evidence supporting this conclusion.
The Panel also concludes that even if the Respondent ignored the rights of the Complainant in the KOLHER Marks, a simple trademark search or a web browser search would have revealed such rights. Thus, this also supports a finding of bad faith. See BzzAgent, Inc. v. bzzaget.com c/o Nameview Inc. Whois IDentity Shield and Vertical Axis, WIPO Case No. D2010-1187.
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 <tokyo-kohler.com> be transferred to the Complainant.
Date: October 25, 2021