KAWS Inc. v. Martin / Jordan Edward / Edward Jordan
Claim Number: FA2202001986310
Complainant is KAWS Inc. (“Complainant”), represented by Lisa A. Ferrari of Cozen O’Connor, New York, USA. Respondent is Martin / Jordan Edward / Edward Jordan (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <swaknft.com> and <kawsfarm.com>, registered with NameSilo, LLC and Dynadot, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2022; the Forum received payment on February 28, 2022.
On March 1, 2022, NameSilo, LLC; Dynadot, LLC confirmed by e-mail to the Forum that the <swaknft.com> and <kawsfarm.com> domain names are registered with NameSilo, LLC and Dynadot, LLC and that Respondent is the current registrant of the names. NameSilo, LLC and Dynadot, LLC have verified that Respondent is bound by the NameSilo, LLC and Dynadot, 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 March 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2022 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@swaknft.com, postmaster@kawsfarm.com. Also on March 3, 2022, 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.
On March 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceeding, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the <swaknft.com> and <kawsfarm.com> domain names are controlled by the same Respondent since the resolving website for the <swaknft.com> domain name links to the website for the <kawsfarm.com> domain name. See Compl. Annexes A & B. Additionally, the <swaknft.com> domain name links to a twitter account that includes posts to the <kawsfarm.com> domain name. See Compl. Annex C. Accordingly, Complainant submits that in reality the two disputed domain names are registered by the same domain name holder.
The Panel has examined all of the evidence and the circumstances and finds that the domain names are owned/controlled by a single Respondent who is using multiple aliases and that they are in reality registered by the same domain name holder.
A. Complainant
Complainant made the following contentions.
Complainant, KAWS Inc., is the corporate entity of artist Brian Donnelly, who is known professionally as KAWS. Complainant has rights in the KAWS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,046,763, registered May 5, 2020). See Compl. Annex D. Respondent’s <swaknft.com> and <kawsfarm.com> domain names are confusingly similar to Complainant’s KAWS mark as the <swaknft.com> domain name reverses the order of the letters in the KAWS mark, the <kawsfarm.com> domain name incorporates the entire mark, and both add generic terms, either “NFT” or “farm.”
Respondent lacks rights and legitimate interests in the <swaknft.com> and <kawsfarm.com> domain names. Respondent is not commonly known by the disputed domain names and is not affiliated with Complainant or authorized to use the KAWS mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses them to pass itself off as Complainant and offer counterfeit or unauthorized goods for sale.
Respondent registered and uses the <swaknft.com> and <kawsfarm.com> domain names in bad faith. Respondent uses the disputed domain name to pass off as Complainant and offer counterfeit or unauthorized goods for sale. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the KAWS mark based on use of the mark on the resolving websites.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the corporate entity of the prominent artist Brian Donnelly, who is known professionally as KAWS.
2. Complainant has rights in the KAWS mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,046,763, registered May 5, 2020).
3. Respondent registered the disputed domain names on January 16, 2022 and February 10, 2022.
4. Respondent uses the domain names to pass itself off as Complainant and offer counterfeit or unauthorized goods for sale.
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."
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the KAWS mark based on registration of the mark with the USPTO (e.g., Reg. No. 6,046,763, registered May 5, 2020). See Compl. Annex D. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the KAWS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s KAWS mark and to use it in its domain names, adding in the case of one domain name the word “farm” and in the other case reversing the spelling of the KAWS trademark and adding the letters “ nft”, widely understood to stand for non -fungible token;
(b) Respondent registered the disputed domain names on January 16, 2022 and February 10, 2022;
(c) Respondent uses the domain names to pass itself off as Complainant and offer counterfeit or unauthorized goods for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <swaknft.com> and <kawsfarm.com> domain names because Respondent is not commonly known by the disputed domain names and is not affiliated with Complainant or authorized to use the KAWS mark. When no response is submitted, WHOIS information and lack of authorization to use a mark can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies “Martin / Jordan Edward / Edward Jordan” as the registrant and Complainant submits that Respondent has not been authorized to use the KAWS mark. See Registrar Verification Emails. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain names to pass itself off as Complainant and offer counterfeit or unauthorized goods for sale. Use of a disputed domain name to pass off as a complainant and sell unauthorized or counterfeit goods is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business. Here, Complainant provides screenshots of the resolving websites for the disputed domain names which feature Complainant’s marks and offer NFTs or cryptocurrency branded with Complainant’s KAWS mark. See Compl. Annexes A & B. Thus, the Panel agrees with Complainant and finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <swaknft.com> and <kawsfarm.com> domain names in bad faith because it uses them to pass itself off as Complainant and offer counterfeit or unauthorized goods for sale. Use of a disputed domain name to pass off as a complainant and offer unauthorized goods for sale can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”). The Panel notes that Complainant provides screenshots showing Respondent uses the disputed domain names to offer NFTs and cryptocurrency branded with Complainant’s marks for sale. See Compl. Annexes A & B. Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the KAWS mark based on use of the mark on the resolving websites. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Here, Complainant contends Respondent had knowledge of Complainant’s rights in the KAWS mark since the disputed domain names feature Complainant’s marks and reference Complainant and it’s KAWS mark. See Compl. Annexes A, B & J. Therefore, the Panel finds Respondent had actual knowledge of Complainant’s rights in the KAWS mark and thus registered the disputed domain names in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swaknft.com> and <kawsfarm.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 30, 2022
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