KAWS Inc. v. Jacin Tryll
Claim Number: FA2212002023622
Complainant is KAWS Inc. (“Complainant”), represented by Lisa A. Ferrari of COZEN O’CONNOR, New York, USA. Respondent is Jacin Tryll (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kawsxdoodles.com>, registered with NameCheap, Inc.
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 KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 12, 2022; Forum received payment on December 12, 2022.
On December 12, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <kawsxdoodles.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@kawsxdoodles.com. Also on December 13, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 made the following contentions:
Complainant, KAWS Inc., was founded in 2002 and is the corporate entity of artist Brian Donnelly, who is known professionally as KAWS. Complainant asserts rights in the KAWS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,046,763, registered May 5, 2020). See Compl. Ann. A. The <kawsxdoodles.com> domain name is confusingly similar to Complainant’s KAWS mark because the disputed domain name incorporates the entirety of the Complainant’s mark with the addition of the generic term “xdoodles” and the generic top level domain (“gTLD”) “.com”.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <kawsxdoodles.com> domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, Respondent is passing off as Complainant. Respondent is diverting consumers to sell counterfeit goods.
Respondent registered and uses the <kawsxdoodles.com> domain name in bad faith. Respondent is diverting Internet users to its infringing website. Additionally, Respondent had actual knowledge of Complainant’s rights in the KAWS mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and the corporate entity of the prominent artist Brian Donnelly who is known professionally as KAWS.
2. Complainant has established its rights in the KAWS mark by virtue of its 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 <kawsxdoodles.com> domain name on October 6, 2022.
4. Respondent has used the disputed domain name to capitalize on Complainant’s mark by luring consumers looking for Complainant’s genuine goods and services, and then diverting them to its own counterfeit goods and services.
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 (e.g. Reg. No. 6,046,763, registered May 5, 20207) based upon registration with the USPTO. See Compl. Ann. A. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established its rights in the KAWS mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KAWS mark. Complainant submits the <kawsxdoodles.com> domain name is confusingly similar to Complainant’s KAWS mark. The addition of a generic word as well as a gTLD to a trademark will not negate an argument of confusing similarity per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The disputed domain name incorporates the entirety of the Complainant’s mark with the addition of the generic term “xdoodles” and the “.com” gTLD. This must raise in the mind of the internet user the assumption that the domain name is an official KAWS domain name, that it will lead to an official KAWS website and that the goods and services for sale are genuine KAWS goods and services, none of which is true. Therefore, the Panel agrees with Complainant and finds that the <kawsxdoodles.com> domain name is confusingly similar to Complainant’s KAWS mark per 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s KAWS mark and to use it in its domain name adding only the word “xdoodles” to the mark to create the domain name, which does not negate a finding of confusing similarity that is otherwise open on the evidence, as it is in the present case;
(b) Respondent registered the domain name on October 6, 2022;
(c) Respondent has used the disputed domain name to capitalize on Complainant’s mark by luring consumers looking for Complainant’s genuine goods and services, and then diverting them to its own counterfeit goods and services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent is not commonly known by the <kawsxdoodles.com> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record names “Jacin Tryll” as the registrant of the disputed domain name. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <kawsxdoodles.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. Respondent is clearly intending to confuse consumers and pass off its own goods and services as being related to, sponsored by or otherwise affiliated with Complainant’s legitimate goods and services. Attempting to pass off as a complainant is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”). Here, Complainant provides screenshot evidence of the Respondent’s resolving website at the disputed domain name. See Compl. Ann. C. Accordingly, the Panel finds Respondent failed to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent fails to use the <kawsxdoodles.com> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. Respondent is intending to capitalize on Complainant’s mark by luring consumers looking for Complainant’s genuine goods, and then diverting them to its own counterfeit goods and services. Selling counterfeit goods is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶¶ 4(c)(i) and (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant provides screenshot evidence of the Respondent’s resolving website at the disputed domain name. See Compl. Ann. C. Therefore, as the Panel agrees with Complainant, it finds Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <kawsxdoodles.com> domain name in bad faith. Respondent is using the disputed domain name to direct consumers and Internet users to Respondent’s own website, which repeatedly displays Complainant’s mark and name and images of Complainant’s copyrighted works and offers for sale unauthorized goods. Diverting Internet users to an infringing website is evidence of bad faith per Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Here, Complainant provides screenshot evidence of the Respondent’s resolving website. See Compl. Ann. C. Accordingly, the Panel finds Respondent registered and uses the <kawsxdoodles.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent registered the <kawsxdoodles.com> domain name with actual knowledge of Complainant’s rights in the KAWS mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). 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 actual knowledge of Complainant’s rights in the KAWS mark as evidenced by the repeated use of that mark and images of Complainant’s copyrighted works and the offering of unauthorized and counterfeit goods of Complainant. Complainant further submits that it first used the KAWS mark in 1999, well before Respondent registered the disputed domain name on October 6, 2022. See Compl. Ann. C. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
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 <kawsxdoodles.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 5, 2023
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