Kawsrocksofficial.com

The timeline behind kawsrocksofficial.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION KAWS Inc. v. Ndashi Awanga Claim Number: FA2403002091024 PARTIES Complainant is KAWS Inc. ("Complainant"), represented by Lisa A. Ferrari of Cozen O'Connor, New York, USA. Respondent is Ndashi Awanga ("Respondent"), California, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <kawsrocksofficial.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu. PANEL The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding. Richard Hill as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on March 29, 2024; Forum received payment on March 29, 2024. On April 1, 2024, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <kawsrocksofficial.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 April 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 2024 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@kawsrocksofficial.com. Also on April 1, 2024, 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 April 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant states that it was founded in 2002 and is the corporate entity of artist Brian Donnelly, who is known professionally as KAWS. Mr. Connelly 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. KAWS' sculptures range in size from a few inches to ten meters tall and have been exhibited in galleries and museums around the world. Mr. Donnelly's 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, augmented reality sculptures and other products. In 1999, Mr. Donnelly made his first three-dimensional sculpture, called "Companion", which was a vinyl, mouse-like figure having gloved hands and "XX's" for eyes. Other of his characters include "Accomplice", "Chum" and "Bendy". Donnelly's work has been included in various exhibitions, including the traveling exhibition Beautiful Losers, which traveled throughout the United States and Europe, and a recent solo exhibition at the Brooklyn Museum in New York City. Sculptures of his "Companion" character have been shown in exhibitions in Switzerland, Hong Kong, Spain, England, China, Australia, France, Qatar, Korea and the United States. 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. Since at least as early as 1999, Complainant has offered a variety of goods and services under the name and mark KAWS, 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 asserts rights in the KAWS mark through its registration in the United States in 2020. Complainant alleges that the disputed domain name is confusingly similar to its KAWS mark, as it incorporates the mark in its entirety, merely adding the generic/descriptive terms "rocks official", and the ".com" generic top-level domain ("gTLD"). Complainant cites UDRP precedents to support its position. According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use its mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, or a legitimate noncommercial or fair use. Instead, the resolving website displays Complainant's mark and distinctive logo, and uses the KAWS mark to sell counterfeit goods, specifically, counterfeit KAWS-branded cannabis products. Complainant cites UDRP precedents to support its position. Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to attract users for commercial gain by selling counterfeit goods. Respondent had constructive and/or actual notice of Complainant's rights in the KAWS mark, evidenced by the fame and notoriety of the mark and its use on the resolving website. Complainant cites UDRP precedents to support its position. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has registered trademarks for the mark KAWS and uses it to market artwork and related goods and services. The mark was registered in 2020. Complainant has not licensed or otherwise authorized Respondent to use its mark. The disputed domain name was registered in 2023. The resolving website offers for sale counterfeit goods; it displays Complainant's mark and distinctive logo. 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 disputed domain name incorporates Complainant's KAWS marks in its entirety, merely adding the generic/descriptive terms "rocks official" and the ".com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or generic/descriptive terms is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed domain name. 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). Here, the WHOIS information shows that the registrant is known as "Ndashi Awanga". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The resolving website sells counterfeit goods. This is not a bona fide offering of goods and services or legitimate noncommercial or fair use under the Policy. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name."); see also 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). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. Registration and Use in Bad Faith Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name. Indeed, as already noted, the resolving website offers for sale counterfeit goods. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, FA 1587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant's marks to sell unauthorized goods); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent's selling of counterfeit products creates the likelihood of confusion as to the complainant's affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv). Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving website displays Complainant's mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also 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."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii). 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 <kawsrocksofficial.com> domain name be TRANSFERRED from Respondent to Complainant. Richard Hill, Panelist Dated: April 23, 2024 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.