NATIONAL ARBITRATION FORUM

DECISION

The Keith Haring Foundation Inc. v. 黄立东 / 竹海國際貿易有限公司

Claim Number: FA2308002058669

PARTIES

Complainant is The Keith Haring Foundation Inc. ("Complainant"), represented by Corsearch, Inc., Texas, USA. Respondent is 黄立东 / 竹海國際貿易有限公司 ("Respondent"), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <keithharing.store>, <keithharinghoodie.com>, <keithharingshirt.com> and <keithharingsweatshirt.com>, registered with Xin Net Technology Corporation.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 23, 2023; Forum received payment on August 23, 2023.

On August 23, 2023 and August 24, 2023, Xin Net Technology Corporation confirmed by e-mail to Forum that the <keithharing.store>, <keithharinghoodie.com>, <keithharingshirt.com> and <keithharingsweatshirt.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 August 30, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of September 19, 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@keithharing.store, postmaster@keithharinghoodie.com, postmaster@keithharingshirt.com and postmaster@keithharingsweatshirt.com. Also on August 30, 2023, the Chinese and English 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 in Chinese and English.

On September 20, 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PRELIMINARY ISSUES:

A. MULTIPLE RESPONDENTS

In this proceeding, the Complaint has been made in the one proceeding for four domain names. That is permitted by Rule 3(c) provided that the domain names being sought "are registered by the same domain name holder." The question therefore is whether the four domain names in question are registered by the same domain name holder.

Complainant submits 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. Accordingly, the Complainant submits that the domain names are registered by the one domain name holder.

It is apparent from examining all the documentation that there has been a concerted exercise from the one source that is being aimed at the four domain names and that, although they are the subject to separate registrations, the domain name holder is the one source using several aliases. Thus, in reality, all the domain names have been registered by "the same domain name holder" being the named Respondent. The proceeding is therefore in order and may proceed on that basis.

B. Language of the Proceeding

According to the Registrar, the registration agreement for the Domain Names is written in the Chinese language. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Complaint in Chinese and English and argues that it is more appropriate that henceforth the proceeding should be conducted in English. In that regard it is established practice to take Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision. See Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) (finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language). See also, Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website.").

The question therefore is whether in all the circumstances, it is more appropriate to conduct the proceedings in English. The Complainant has argued in that regard that the language should be English because the domain names themselves include the English words "hoodies", "shirt" and "sweatshirt"; all of the content of the resolving websites is in English and offers goods for sale in American dollars; and the Respondent appears to have targeted a United States company by including the KEITH HARING trademark in the domain names. Indeed, the websites in question show clearly an intention to promote their products to a largely English-speaking audience. Thus, the websites contain the expressions "hot sale", "New Arrival", "Keith Haring Merchandise Online Store", "Check out Keith Haring Merchandise" and many similar statements. Also, as if often the case when this issue arises, it is clear that to translate the relevant papers into Chinese, if Chinese remains the language of the proceeding, seems to be unnecessary and to involve considerable expense and inconvenience.

Accordingly, the Panel finds that within the meaning of Rule 11(a) the proceeding should be conducted in the English language and it so orders.

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. The Keith Haring Foundation ("the Complainant") was founded by Keith Haring in 1989. Its mission is to sustain, expand and protect the legacy of Keith Haring, a major figure in art and culture and famous for his contributions to a wide range of artistic endeavors and public causes.

2. To that end, the Complainant owns several trademarks for KEITH HARING ("the KEITH HARING mark") and international copyright to art works created by Keith Haring.

3. In the pursuit of its mission, the Complainant has established a presence on the internet at the website "www.haring.com" and by widespread use of numerous means of communication.

4. In particular, the Complainant registered on December 5, 1995 and March 12, 1996 respectively and uses its own official <keithharing.com> and <haring.com> domain names and uses them in its official activities.

5. Respondent registered the <keithharing.store> domain name on March 21, 2022, the <keithharinghoodie.com> domain name on June 22, 2022, the <keithharingshirt.com> domain name on June 30, 2022 and the <keithharingsweatshirt.com> domain name on October 9, 2022 ( collectively "the disputed domain names").

6. The disputed domain names are nearly identical and confusingly similar to the KEITH HARING mark because the domain names includes the mark in its entirety and add only a generic or descriptive term and a gTLD. Therefore, the domain names are confusingly similar to the KEITH HARING mark.

7. The Respondent has no rights or legitimate interests in the disputed domain names. That is because:

(a) Respondent is not commonly known by any of the domain names;

(b) Complainant is not affiliated with the Respondent and has not granted it any right to use the mark in a domain name or by any other means;

(c) the Respondent has not used any of the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the Respondent is using the mark in the domain names and on the resolving websites;

(d) Respondent has configured the disputed domain names to send and receive emails as MX records have been set up, creating the scope for using them for phishing and potential fraud;

(e) the earliest date on which Respondent registered one of the domain names, namely <keithharing.store> was on March 21, 2022, significantly after Complainant's first use in commerce of the KEITH HARING mark, Complainant's registration of the mark with the USPTO on December 19, 2000 and Complainant's own registration of its <haring.com> and <keithharing.com> domain names on March 12, 1996 and December 5, 1995 respectively.

8. The disputed domain names were registered and have been used in bad faith, because:

(a) Respondent registered the disputed domain names with the intention of causing confusion with the KEITH HARING mark, as their resolving websites display the KEITH HARING mark and copyright images and offer products bearing trademarked artwork that could mislead users into believing that the website is connected with the Complainant;

(b) Respondent is diverting internet users from Complainant's website to Respondent's websites through confusion, intending to disrupt Complainant's business;

(c) Respondent must have had actual knowledge of Complainant's rights in the KEITH HARING mark when it registered the disputed domain names;

(d) Respondent has configured the disputed domain names to send and receive emails as MX records, clearly giving rise to scope for using them for phishing and potential fraud.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

2. Complainant has established its rights in the KEITH HARING mark through its registration of the mark, including, but not confined to, the following registrations for KEITH HARING with:

(a) the United States Patent and Trademark Office ("USPTO"), No. 2413749 registered on December 19, 2000;

(b) the European Union Intellectual Property Office ("EUIPO"), No. 003885969, registered on September 1, 2005; and

No.4144848, registered on January 28, 2008.

3. Respondent registered the <keithharing.store> domain name on March 21, 2022, the <keithharinghoodie.com> domain name on June 22, 2022, the <keithharingshirt.com> domain name on June 30, 2022 and the <keithharingsweatshirt.com> domain name on October 9, 2022 ( collectively "the disputed domain names").

4. Respondent has caused the disputed domain names to resolve to websites that display the KEITH HARING mark and the Complainant's copyrighted images and offer products for sale that carry the KEITH HARING name, brand and mark and pretend to be genuine KEITH HARING products.

5. The evidence establishes that the disputed domain names are confusingly similar to the KEITH HARING mark.

6. The evidence establishes that the Respondent has no rights or legitimate interests in the disputed domain names and that they have been registered and used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a

trademark or service mark on which it may rely. Complainant has established its rights in the KEITH HARING mark through its registration of the mark, including, but not confined to, the following registrations:

(a) with the United States Patent and Trademark Office ("USPTO"), No. 2413749, registered on December 19, 2000;

(b) with the European Union Intellectual Property Office ("EUIPO"), No.003885969, registered on September 1, 2005; and

No.4144848, registered on January 28, 2008.

The Complainant has adduced evidence of each of the foregoing registrations, which the Panel has examined and which it accepts. Thus, the Complainant has proved by evidence that the KEITH HARING mark is widely registered nationally in the United States and internationally, including in China. Registration of a trademark with a recognized authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Since Complainant has registered and has established its rights in the KEITH HARING mark through its widespread registration of the mark, the Panel finds that the Complainant has rights in the mark under Policy ¶ 4(a)(i).

The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant's KEITH HARING mark. Complainant argues that the disputed domain names are confusingly similar to Complainant's KEITH HARING mark because they consist of the mark itself, to which has been added in the case of the first of the domain names, the gTLD ".store" and, in the case of the three remaining domain names, one of the generic or descriptive words "hoodie", "shirt" and "sweatshirt" and in each such case the gTLD ".com". The Panel agrees with the Complainant's submission in every respect. Under Policy ¶ 4(a)(i), the addition of a generic or descriptive word to a trademark does not negate the confusing similarity which is otherwise present between the domain name thus created and a trademark, as it is in the present case. Also, adding a generic Top Level Domain cannot negate the confusing similarity that is otherwise present between a domain name and the trademark, as it is in the present case. Taken as a whole, the domain names mean and would be interpreted by internet users to mean that they are invoking the Complainant's KEITH HARING mark and are using it legitimately to enhance the notion of the mark being used respectively in connection with a store and with the items of clothing that they specify. See, Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD '.com' and the letter 'l' to create a common misspelling of the word 'bank.'). In the present case, it is therefore clear that each of the domain names is similar to the trademark and confusingly so.

The Panel therefore finds that Respondent's domain names are confusingly similar to Complainant's KEITH HARING mark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have such 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)).

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 KEITH HARING mark and to use it in its domain names, added only, in the case of the first domain name, the gTLD ".store" and in the case of the remaining three domain names, one of the generic or descriptive words "hoodie", "shirt" and "sweatshirt" and the gTLD ".com", which do not negate the confusing similarity between the domain names and the mark, and which generate the clear impression that it is referring to and invoking the KEITH HARING mark and is authorized to do so.

(b) Respondent registered the <keithharing.store> domain name on March 21, 2022, the <keithharinghoodie.com> domain name on June 22, 2022, the <keithharingshirt.com> domain name on June 30, 2022 and the <keithharingsweatshirt.com> domain name on October 9, 2022, they being the disputed domain names.

(c) The evidence shows that Respondent has caused the disputed domain names to resolve to respective websites where the Respondent is using the KEITH HARING mark to sell clothing and items of apparel such as hoodies, tshirts, shirts, sweatshirts and similar items that contain Complainant's copyrighted artwork; purporting falsely to assert that the goods are authentic and affiliated with the Complainant when they are not; and engaging by that means in conduct that is tantamount to defrauding customers into believing that the goods are authentic when they are not. By that means, Respondent is typosquatting on Complainant's KEITH HARING trademark and official domain names, impersonating Complainant and displaying, by means of extensive text and photographs, material of the same genre as is displayed on the Complainant's own website and which is thus being presented as in competition with it. Thus, there is no evidence that the Respondent is making a bona fide offering of goods or services within the meaning of Policy 4(c)(i) and the evidence shows clearly that it is not.

(d) If there were any doubt as to the intention of the Respondent to copy the Complainant and its offerings on the foregoing websites, that doubt is negated by the fact that the Respondent's sites use the Complainant's brand and name and specifically assert that the products displayed are genuine, by asserting that they are "real" and "official", when they are not.

(e) Complainant argues that Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its mark in the dispute domain names. There is no evidence that Respondent is so known and the only inference that can be drawn from the evidence is that it is not commonly known by the domain names, within the meaning of Policy 4(c)(ii) or otherwise.

(f) The evidence is that Complainant has not authorized Respondent to use confusingly similar domain names, which Respondent has done and it therefore shows that Respondent is not affiliated with Complainant.

(g) There is no evidence that the Respondent is engaged in a legitimate non-commercial or fair use of the domain name within the meaning of Policy 4(c)(iii) and all the evidence shows that it is not. The evidence shows that the Respondent's conduct is illegitimate in every sense, purely commercial and not a fair use of the domain names which in any event do not entitle the Respondent to use the domain names at all.

(h) The same conclusions are reached by the Complainant's proof that the earliest date on which Respondent registered one of the domain names, namely <keithharing.store> was on March 21, 2022, significantly after Complainant's first use in commerce of the KEITH HARING mark, Complainant's registration of the mark with the USPTO on December 19, 2000, Complainant's own registration of its <keithharing.com> and <haring.com> domain names on December 5, 1995 and March 12, 1996 respectively, and its use of them in its official activities.

(i) Complainant has shown that Respondent has configured the disputed domain names to send and receive emails as MX records have been set up, creating the scope for using them for phishing and potential fraud.

(j) The Respondent had an opportunity to show circumstances to the contrary of the above conclusions but has not done so.

Complainant has correctly cited several prior UDRP decisions that support the foregoing contentions.

All of these matters go to make out the prima facie case against Respondent.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

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 that they 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, the circumstances in the present case all show that the Respondent has been engaged in the improper registration and use of the disputed domain names in bad faith.

Secondly, and as already found, the evidence shows that the Respondent has caused the disputed domain names to resolve to respective websites where the Respondent is using the KEITH HARING mark to sell clothing and items of apparel such as hoodies, tshirts, shirts, sweatshirts and similar items that contain Complainant's copyrighted artwork; purporting falsely to assert that the goods are authentic and affiliated with the Complainant when they are not; and engaging by that means in conduct that is tantamount to defrauding customers into believing that the goods are authentic when they are not.

Thirdly, those facts show that the Respondent registered the disputed domain names with the intention of attracting internet users to the websites to which the disputed domain names resolve by creating a likelihood of confusion with the KEITH HARING mark as to the source, sponsorship, affiliation and endorsement of the products offered for sale, within the meaning of Policy 4 (b)(iv).

Fourthly, by that means, and as already found, Respondent is typosquatting on Complainant's KEITH HARING trademark and official domain names, impersonating Complainant and displaying, by means of extensive text and photographs, products of the same genre as are displayed on the Complainant's own website and which are in competition with them. Thus, there is no evidence that the Respondent is offering to sell the products displayed on its websites in good faith and the evidence shows clearly that they are being offered for sale in bad faith.

Fifthly, the evidence shows that the Respondent is using the Complainant's KEITH HARING mark, brand and name to trade on the Complainant's business and reputation and to disrupt it.

Sixthly, the whole modus operandi of the Respondent is commercial and designed to obtain revenue by deception, which clearly demonstrates bad faith. The Panel particularly notes statements on the Respondent's websites to which the disputed domain names resolve such as "Keith Haring Sweatshirt – Official Licensed", "Our merch comes up with Keith Haring real merch…," "you can shop entirely Keith Haring merch collection," "Keith Haring Official Store Mission," and "We only offer products from trusted and reliable brands." These and other statements are clear and, on the evidence, false assertions that the products offered for sale are genuine articles produced under the KEITH HARING mark.

Respondent has also configured the disputed domain names to send and receive emails as MX records, clearly giving rise to scope for using them for phishing and potential fraud. The Panel finds that this submission has been established.

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent's registration of the disputed domain names using the KEITH HARING mark and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.

Complainant has also cited several prior UDRP decisions that support the foregoing contentions.

Complainant has thus made out the third of the three elements that it must establish.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <keithharing.store>, <keithharinghoodie.com>, <keithharingshirt.com>, and <keithharingsweatshirt.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: September 24, 2023