DECISION

 

KAWS Inc. v. BabyKaws

Claim Number: FA2311002070430

PARTIES

Complainant is KAWS Inc. ("Complainant"), represented by Lisa A. Ferrari of Cozen O'Connor, New York, USA. Respondent is BabyKaws ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <kawsclothing.com> and <babykaws.com>, registered with Squarespace Domains II LLC.

 

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 10, 2023. Forum received payment on November 10, 2023.

 

On November 10, 2023, Squarespace Domains II LLC confirmed by e-mail to Forum that the <kawsclothing.com> and <babykaws.com> domain names are registered with Squarespace Domains II LLC and that Respondent is the current registrant of the names. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 November 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@kawsclothing.com, postmaster@babykaws.com. Also on November 13, 2023, 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 December 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, KAWS Inc., was founded in 2002 and is the corporate entity of artist Brian Donnelly, who is known professionally as KAWS. Complainant has used the KAWS mark in commerce in connection with a variety of art-related goods and services for many years.

 

Complainant has rights in the KAWS mark through trademark registrations with the United States Patent and Trademark Office ("USPTO"). Complainant also has rights in the mark XX. Respondent's <kawsclothing.com> and <babykaws.com> domain names are confusingly similar to Complainant's KAWS mark.

 

Respondent lacks rights or legitimate interests in the <kawsclothing.com> and <babykaws.com> domain names since Respondent has no relationship, affiliation, connection, endorsement or association with Complainant and Respondent has never requested or received any authorization, permission or licence from Complainant to use the domain names or the KAWS mark in any way. There is no evidence to suggest that Respondent is commonly known by that name. Additionally, Respondent does not use the domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is using the KAWS mark to sell counterfeit sculptures, wall art and clothing.

 

Respondent registered the <kawsclothing.com> and <babykaws.com> domain names in bad faith with actual knowledge of Complainant's rights in the KAWS mark and uses them in bad faith to direct consumers and Internet users to Respondent's own websites, which repeatedly display Complainant's KAWS mark and name, its XX mark, and images of Complainant's copyrighted works, and offers for sale unauthorized goods of Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

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

Complainant has shown that it has rights in the KAWS mark through registrations with the USPTO (e.g., Reg. No. 6,046,763, registered on May 5, 2020). Complainant has also registered the mark XX with the USPTO (Reg. No. 6,116,823, registered on August 4, 2020).

 

The Panel finds Respondent's <kawsclothing.com> and <babykaws.com> domain names to be confusingly similar to Complainant's mark, only differing by the addition of the words "clothing" or "baby", which do nothing to distinguish the domain names from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <kawsclothing.com> and <babykaws.com> domain names were both registered on January 4, 2023, several years after Complainant registered its KAWS mark. They resolve to websites displaying Complainant's KAWS mark and purporting to offer clothing and artwork bearing Complainant's XX mark.  

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <kawsclothing.com> and <babykaws.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

 

(iv)                      by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

 

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's KAWS mark when Respondent registered the <kawsclothing.com> and <babykaws.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Complainant has established this element.

 

DECISION

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

 

Accordingly, it is Ordered that the <kawsclothing.com> and <babykaws.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Alan L. Limbury, Panelist

Dated: December 6, 2023