WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kohler Credit Union v. Domain Admin, Whois protection, this company does not own this domain name s.r.o / Hulmiho Ukolen, Poste restante

Case No. D2021-2028

1. The Parties

The Complainant is Kohler Credit Union, United States of America (the “United States”), represented by Husch Blackwell LLP, United States.

The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o, Czech Republic / Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <kohlercreditunion.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2021. On June 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 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 7, 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 on July 9, 2021.

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 July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2021.

On August 24, 2021, the Center sent communications to the Registrar and the Parties about the expiration of the disputed domain name, and requested the Registrar to confirm that the disputed domain name will remain locked. On August 27, 2021, the Registrar confirmed that the disputed domain name would remain locked until this proceeding is concluded.

The Center appointed Adam Taylor as the sole panelist in this matter on August 27, 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 has provided credit union services in the United States under the name “Kohler Credit Union” since 1938. Amongst other things, the Complainant supplies payment cards that can be used throughout the United States and internationally.

The Complainant owns United States registration No. 5,585,136 for KOHLER CREDIT UNION, filed on March 8, 2018, registered on October 16, 2018, in class 36.

The disputed domain name was registered on August 18, 2018.

As of May 17, 2021, the disputed domain name was being offered for sale for USD 30,524.

When visited by the Panel on September 10, 2021, the Respondent’s website consisted of pay-per-click (“PPC”) links for a range of goods and services, approximately half of which related to credit cards.

The Respondent has been found to have registered and used domain names in bad faith in around 50 UDRP cases, including Rubik’s Brand Limited v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2020-1011.

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complainant’s contentions:

Due to the Complainant’s longstanding use of the mark, including substantial marketing expenditure, the Complainant’s KOHLER CREDIT UNION mark has become well known in the United States.

The filing of the Complainant’s registered trade marks and use of the Complainant’s unregistered trade marks predate registration of the disputed domain name.

The disputed domain name is identical to the Complainant’s trade mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

None of the factors in paragraph 4(c) of the Policy apply.

The Complainant has not authorised the Respondent to use its marks, nor does the Complainant have any relationship with the Respondent.

The Respondent is not using the disputed domain name for any commercial purpose.

The disputed domain name carries a high risk of implied affiliation because it is identical to the Complainant’s trade mark.

There is no evidence that the Respondent is commonly known by the disputed domain name, use of which can only be explained as an attempt to mimic the Complainant.

The disputed domain name was registered and is being used in bad faith.

It is inconceivable that the Respondent did not know of the Complainant and its rights therein when it registered the disputed domain name.

The listing of the disputed domain name for sale at USD 30,524 constitutes a bad faith offer to sell the disputed domain name to the Complainant or a competitor, and the Respondent has been found to have made similar bad faith offers in other UDRP cases.

The Respondent has provided a false address and phone number. False registration information has supported findings of bad faith in other UDRP cases involving the Respondent.

The Respondent has engaged in pattern of conduct preventing trade mark holders from reflecting their marks in domain names.

The Respondent’s continuing use of the disputed domain name will infringe the Complainant’s trade marks. Customer confusion arising from the Respondent’s use of a name uniquely associated with the Complainant will cause irreparable damage to its business and goodwill.

B. Respondent

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

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established rights in the mark KOHLER CREDIT UNION by virtue of its registered trade marks, registered in the United States prior to the filing of the Complaint.

Disregarding the top-level domain (“TLD”), the disputed domain name is identical to the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.

As to paragraph 4(c)(i) of the Policy, the disputed domain name has been used ¹ for PPC links, around half of which were for credit card services and, therefore, related to the services supplied by the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See section 2.9 of WIPO Overview 3.0, which states that use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalise on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

Furthermore, the nature of the disputed domain name, being identical to the Complainant’s mark, carries a high risk of implied affiliation (see section 2.5.1 of WIPO Overview 3.0).

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel has little difficulty in concluding that the disputed domain name was registered and is being used in bad faith for the following reasons:

1. It is obvious that the Respondent was aware of the Complainant when it registered the disputed domain name, which is only explicable by reference to the Complainant’s highly distinctive name and trade mark.

2. The Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.

3. Given that the disputed domain name is uniquely associated with the Complainant, it is likely that the Respondent’s offer to sell it for approximately USD 30,000 was directed to the Complainant and that the disputed domain name was registered for that purpose.

4. The Respondent has used the disputed domain name for a website with PPC links relating to the Complainant’s industry.

5. The Respondent has used false contact details.

6. The Respondent has been found to have registered and used other domain names in bad faith in many other cases under the Policy.

Furthermore, as stated in section 3.8.2. of WIPO Overview 3.0, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trade mark rights, UDRP panels have been prepared to find that the respondent has acted in bad faith. Some of these circumstances include scenarios where the registration of a domain name follows the complainant’s filing of a trade mark application. In this case, the trade mark application for KOHLER CREDIT UNION was filed before the United States Patent and Trademark Office on March 8, 2018, and the disputed domain name was registered on August 18, 2018. The Complainant claims to have used its mark KOHLER CREDIT UNION since 1938 and the United States registration No. 5,585,136 references a first use in commerce on April 14, 1938. The Respondent has not provided any explanation for the registration of the identical disputed domain name after the filling of the trade mark application for the Complainant’s mark (long after the Complainant’s claimed first use of such mark). Taking into consideration the above circumstances, it is clear to the Panel that the Respondent knew of the Complainant and its trade mark, and registered the disputed domain name with the intent to unfairly capitalize on the Complainant’s nascent trade mark rights.

For the above reasons, the Panel considers that the Respondent has registered and is using the disputed domain name in bad faith and that the Complainant has established the third element of paragraph 4(a) 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 <kohlercreditunion.com> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: September 10, 2021

¹ Section 4.8 of WIPO Overview 3.0 states that UDRP panels may undertake limited factual research into matters of public record if they consider such information useful in assessing the merits of the case and reaching a decision. This includes visiting the website linked to the disputed domain name. The Panel did indeed visit the website at the disputed domain name and noted that it was used as described in section 4 above.