KAWS, Inc. v. Swift Michael
Claim Number: FA2101001928396
Complainant is KAWS, Inc. (“Complainant”), represented by Mayura I. Noordyke of Cozen O’Connor, Minnesota, USA. Respondent is Swift Michael (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kawsone.shop>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2021; the Forum received payment on January 14, 2021.
On January 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kawsone.shop> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kawsone.shop. Also on January 18, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an email to the Forum, see below.
On February 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the corporate entity of artist Brian Donnelly, who is known professionally as KAWS. Mr. Donnelly is an American artist and designer whose work features figurative characters and motifs, some dating back to the beginning of his career in the 1990s. His KAWS’ sculptures range in size from a few inches to ten meters tall and have been exhibited in galleries and museums around the world. His work has also been avidly collected, including by numerous notable and well-known individuals, including musician Pharrell Williams and members of the South Korean musical group BTS. Mr. Donnelly’s work consists of sculptures, acrylic paintings, and screen prints as well as commercial collaborations, such as limited edition toys, clothing, skate decks, and other products. In 1999, Mr. Donnelly made his first three-dimensional sculpture, called Companion, which was a vinyl figure inspired by Mickey Mouse and which had gloved hands and “XX’s” for eyes. Other of his characters include Accomplice, Chum and Bendy. His work has been included in various exhibitions, including the traveling exhibition Beautiful Losers, which traveled throughout the United States and Europe. Sculptures of his “Companion” character have been shown in exhibitions in Switzerland, Hong Kong, Spain, England, China, Australia, France, Qatar, and Korea. On April 1, 2019, a painting by Mr. Donnelly sold for 115.9 million Hong Kong dollars (or about $14.7 million USD). Complainant is the assignee of Mr. Donnelly and owns all intellectual property rights in his works. Complainant offers a variety of goods and services in connection with the KAWS trademark, including sculptures, paintings, photographs, drawings, prints, accessories, bags, household goods, clothing, and toys. The KAWS Mark is well known around the world in connection with Mr. Donnelly’s art and related goods and services. Complainant markets its products through its web site <kawsone.com>, registered in 2001. Complainant has rights in the KAWS mark through its registration in the United States on May 5, 2020, filing date October 2, 2019. Complainant also has rights in the figurative mark XX, which is a distinctive feature of the KAWS figures.
Complainant alleges that the domain name is confusingly similar to its KAWS mark, only differing by the addition of the generic term “one” and the “.shop” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the KAWS mark. Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and attempts to sell counterfeits of Complainant’s goods: on its “About Us” page, the resolving website falsely states that it is a “KAWS OFFICIAL RETAILER”, and it displays Complainant’s figurative XX mark. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent’s domain name diverts Internet users away from Complainant’s website, leading to commercial gain for Respondent. Additionally, Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the KAWS mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. It its email to the Forum, Respondent states, in pertinent part: “We currently don’t have any time to deal with this domain dispute, so we will not appeal and we will not pay any money. We can donate this domain name. Please tell me what else you need us to do?”
For the reasons set forth below, the Panel will not make any findings of fact.
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
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."
The Panel interprets Respondent’s email as consent to transfer the disputed domain name. Thus, the Panel finds that the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <kawsone.shop> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 11, 2021
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