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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Angus Sholto-Douglas, Kwandwe Private Game Reserve v. Sergey Fedorov

Case No. D2006-1184

 

1. The Parties

The Complainant is Angus Sholto-Douglas, Kwandwe Private Game Reserve, of Grahamstown, South Africa, represented by Traverse Legal, PLC, United States of America.

The Respondent is Sergey Fedorov, of Moscow, Russian Federation.

 

2. The Domain Name and Registrar

The disputed domain name <kwandwe.com> is registered with Parava Networks, Inc. dba RegistrateYa.com & nAAme.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2006. On September 15, 2006, the Center transmitted by email to Parava Networks, Inc. dba RegistrateYa.com & nAAme.com a request for registrar verification in connection with the domain name at issue. On September 15, 2006 Parava Networks, Inc. dba RegistrateYa.com & nAAme.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a further request from the Center, the Registrar transmitted by email confirmation that the Respondent had submitted in its registration agreement to the jurisdiction of the Courts at the location of the principal office of the Registrar, being Houston, Texas, United State of America. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default.

The Center appointed Ian Blackshaw as the sole panelist in this matter on November 16, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant’s Business

The Complainant, Kwandwe Private Game Reserve, was established in 2000 with the first lodge opening in 2001.

In 2001, the Complainant signed a management agreement with CC Africa to manage and market the lodges. Conservation Corporation Africa (aka CC Africa) is Africa’s leader in ecotourism and is committed to providing world-class travel experiences. A letter dated July 27, 2006 confirming the relationship between Kwandwe Private Game Reserve and CC Africa has been provided to the Panel.

One of CC Africa’s safari experiences is in a private reserve in the Eastern Cape of South Africa, known as Kwandwe Private Game Reserve. The Complainant’s Kwandwe Private Game Reserve spans over 62,000 acres and some of its offerings include safari lodges, animal and other game viewing, tours, hiking, fishing, canoeing, golf, polo, and conservation education.

Kwandwe means “Place of the Blue Crane” in Xhosa. The blue crane is South Africa’s highly endangered national bird. Kwandwe Private Game Reserve is populated by numerous species, including the blue crane.

The Complainant’s Mark

The Complainant’s services are well and favorably known throughout the United States. In fact, the top ten results of a Google search of the term “kwandwe” all refer to the Complainant’s mark and service. The Complainant has built valuable goodwill and a strong reputation in KWANDWE and all composite marks accompanying the mark.

KWANDWE has become famous. It has been cited in books, reviewed by popular travel providers such as Orbitz, and been featured in national magazines, such as Forbes. Copies of printouts of these references have been provided to the Panel. Lately, KWANDWE was featured in a full page advertisement in The New York Times on June 4, 2006, a copy of which has also been provided to the Panel.

KWANDWE is also a distinctive identifier of the Complainant’s products and services.

The Complainant actually used KWANDWE as its domain name for over 2.5 years before the Respondent began using it to redirect to its pornography sites. A printout of the WHOIS database results of <kwandwe.com>, including the domain history showing prior ownership by the Complainant’s media group, has been provided to the Panel. The Respondent registered the domain name on February 11, 2004 during the registration lapse that inadvertently occurred on November 28, 2003.

Although being forced to adopt <kwandwereserve.com> on March 31 2004, following the Respondent’s hijacking of <kwandwe.com> during a lapse, the Complainant has continued to expend substantial sums of money advertising the tourism services it had done previously on <kwandwe.com>. Copies of the WHOIS database results for <kwandwereserve.com> and printouts of the website as of June 5, 2006, have been provided to the Panel.

The Complainant has, in the past, registered and used <kwandwe.com>. Copies of the Network Solutions Domain Registration Invoice and the African Travel Magazine’s website noting the addition of the Kwandwe Private Game Reserve’s and advertising their website “www.kwandwe.com” have been provided to the Panel.

The Complainant has registered, used, and continues to use <kwandwereserve.com>.

The Complainant also currently owns and utilizes “www.kwandwe.org”, “kwandwe.co.za”, and “www.kwandwereserve.co.za”.

Given its efforts over the years, the Complainant has established a strong customer base and is known throughout the world as a provider of quality services in the field of ecotourism. As a result of its expenditures of considerable sums of money on advertising and promotional activity, the Complainant has built up valuable goodwill in KWANDWE.

The Complainant’s Use of the Internet

The Complainant has continuously used the Internet to market its services. Information pertaining to lodging, accommodations, game viewing, safari activities, conservation, and safari options.

Rates are displayed and contact information is provided for consumers interested in purchasing the Complainant’s services. In addition, the website provides a form that can be completed by interested consumers and instantly transmitted to the Complainant for processing.

An online bookstore offers numerous African safari related materials and previous guest testimonials provides additional insight and information to prospective consumers.

The Internet has become an indispensable tool through which the Complainant communicates, markets, and services its customers.

The Respondent’s Use of the Disputed Domain Name

The Respondent has established a website accessible via the <kwandwe.com> domain name, which provides sexually explicit and pornographic material.

When a user enters <kwandwe.com> into the web browser, the user is redirected to “www.allpornsites.net”, that includes the title “The Best Pantyhose & Nylon Sites” as well as links to “Rape Sites,” “Zoo Sites,” and “Pissing Sites,” for example. Copies of the corresponding printouts from the Respondent’s website have been provided to the Panel.

Upon clicking on one of the links provided, the user accesses other pornographic sites and is asked to pay to subscribe to the pictures, videos, products, and/or services offered. The Panel has been provided with a copy of a printout as an example of the site accessed after clicking the “Love Nylons” link, which requires payment.

When the user enters another URL into the web browser, the user is forced to view another website, “www.search-ok.com”, which offers the “Most Popular Adult Searches,” including “Incest,” for example. Copies of printouts from the popup web browser when attempting to leave the Complainant’s website have been provided to the Panel.

Only upon closing the web browser or retyping, yet again, the URL into the web browser can the user view its intended destination. This is the equivalent of a ‘mouse-trapping’ technique.

 

5. Parties’ Contentions

A. Complainant

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The Complainant has trademark registrations for KWANDWE with the Republic of South Africa that took effect July 13, 1999. Copies of the corresponding registration certificates for KWANDWE have been provided to the Panel. In particular, No. 1999/12392 gives the Complainant trademark rights in KWANDWE relating to the marketing and all services related to tourists, travel, and accommodations, amongst others.

The Complainant also has a common law trademark in KWANDWE. These common law rights have accrued through use of the mark by the Complainant on the Internet in connection with the provision of tourism services since 2000. The Panel in The British Broadcasting Co. v. Jaime Renteria, WIPO Case No. D2000-0050 has held:

“This Administrative Panel acknowledges that the Uniform Policy in paragraph 4(a)(i) refers merely to a ‘trademark or service mark’ in which the Complainant has rights, and in particular does not expressly limit the application of the Uniform Policy to a registered trademark or service mark of the Complainant.”

See also Bennett Coleman & Co. Ltd. v. Steven S. Lalwani and Bennett Coleman & Co, Ltd. v. Long Distance Telephone Co., WIPO Consolidated Cases Nos. D2000-0014 and D2000-0015 (noting that the reputation of the mark from actual use, either in hard-copy or electronic publication, “is the nub of the complaint, not the fact of registration as trademarks”). Thus, KWANDWE must not be registered with a governmental authority in order to have such rights in the mark.

In addition, the Complainant contends that since KWANDWE is also a distinctive identifier of the Complainant’s products and services, the mark has acquired secondary meaning. In fact, despite being referenced to the South African region, the Complainant’s longstanding use of KWANDWE as the identifier of its unique offerings and services requires the present Panel to find, as Panels have done in the past given a similar fact pattern, in favor of the Complainant and transfer the domain name. See BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717. KWANDWE is referenced as a geographical indicator only when referring to the Complainant’s private game reserve.

Ultimately, given the length and amount of sales under the KWANDWE mark, the nature and extent of advertising, and consumer and media recognition, the Complainant has legitimate rights in the mark. The Complainant undoubtedly has trademark rights in South Africa, as evidenced by their registrations. In addition, the fact that the secondary meaning may only exist in a specific geographic area does not limit the Complainant’s rights to a common law trademark, especially since that meaning is not limited to a particular geographic region. See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786. Thus, given the widespread recognition, as evidenced by such publications as the New York Times, the Complainant has legitimate rights to the KWANDWE mark.

It is obvious that the disputed domain name <kwandwe.com> is identical to the Complainant’s KWANDWE trademark. See Club Mediterranee v. Beaufort Holding Ltd., WIPO Case No. D2000-1564 (noting that “CLUB MEDITERRANEE” mark and the domain name in dispute, <clubmediterranee.com>, were identical, or at least confusingly similar).

Since the Complainant owned and used <kwandwe.com> prior to the Respondent and since only upon an inadvertent lapse was the Respondent provided with the chance to hijack the disputed domain name, web browsers are confused when their search for a safari leads them to explicit pornography.

The Complainant advertises about the animals present in its reserve by providing pictures and textual information as well as offers site-seeing tours and encounters with various wildlife. Thus, consumers searching for the above mentioned material will also be confused by the links to animal pornography provided on the Respondent’s site. The Panel in Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449 has recognized that:

“it is reasonable to assume that consumers logically associate the Respondent’s domain name, which incorporates the [Complainant’s] trademark, with [Complainant’s] … products. In directing consumers away from [Complainant’s] products online to pornography . . . , it is reasonable to conclude that [Respondent’s domain name] creates an association in the minds of at least some consumers that [Complainant] is commercially associated with the domain name.”

Based on the foregoing, not only is the Respondent’s domain name identical to the Complainant’s KWANDWE mark, but the consumer confusion will be enhanced by pornographic representations of animals after being redirected from a site the consumer thought was to provide wildlife safaris which also include animals.

A2. The Respondent has no rights or legitimate interests in respect of the domain name; (Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Complainant contends that prior to this dispute, the Respondent did not use the disputed domain name, or a trademark corresponding to such domain name, in connection with a bona fide offering of goods or services nor has Respondent made a legitimate non-commercial or fair use of such domain name.

The Complainant never authorized, licensed or otherwise permitted the Respondent to use the KWANDWE trademark.

The Respondent is not commonly known as, nor does the Respondent carry on business as, KWANDWE.

A search of the Index of WIPO UDRP Panel Decisions revealed only one case where a complaint such as the one before this Panel was denied. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 (concluding that “the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i)”). The decision ultimately rests on the fact that there was no evidence to support that the Respondent had heard of the Complainant’s trademark when it had adopted the Domain Name for its website. In the present case, however, the Respondent undoubtedly had knowledge of the Complainant’s Kwandwe Reserve, since the Complainant had registered and used <kwandwe.com>; the Complainant mistakenly let its registration lapse, and the Respondent immediately hijacked the domain name. As evidence, the Complainant marketed its services from January of 2001 until at least August 2003. The Panel has been provided with a copy of a printout from <kwandwe.com> as it was on January 24, 2001; and also one of a printout from <kwandwe.com> as it was on August 6, 2003. Throughout this period, several updates were made to the Complainant’s website, as can be seen in the Internet Archive provided by WayBackMachine, available at “www.archive.org”.

The Respondent’s occupancy began on April 1, 2004, soon after the Complainant had prominently displayed CC Africa, Kwandwe, and Kwandwe Private Game Reserve. The Panel has been provided with a copy of a printout from <kwandwe.com> as it was on April 1, 2004. The Respondent, at the very least, had heard of the Complainant, and as can be seen below, has acted in bad faith.

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Complainant contends that the Respondent registered and is using the subject domain name in bad faith primarily for the purpose of intentionally attracting Internet users to the Respondent’s website where the Respondent advertises and promotes its pornography services and creates a likelihood of confusion with the Complainant’s KWANDWE trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website. Using a disputed domain name simply to link to many other domain names that offer pay-per-view pornography violates the aforementioned bad faith provision, 4(b)(iv). See Barry Diller v. INTERNETCO Corp., WIPO Case No. D2000-1734.

This association with commercial pornography by the Respondent is ultimately tarnishing the Complainant’s goodwill in its common law trademark. See ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (holding that the use of the mark “as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”).

The Respondent has registered a domain name that encompasses, in its entirety, the Complainant’s distinctive KWANDWE mark. The Respondent uses the domain name to attract Internet users who are looking for information about safaris, ecotourism, conservation and Kwandwe Private Game Reserve’s products and services to the Respondent’s website where the Respondent advertises, provides, and links to pornographic materials. It does not matter that, once the Internet users are there, they may recognize the unlikelihood of a business relationship between the Complainant and the Respondent since the Respondent would have already gained website traffic. See National Football League Properties, Inc. et al. v. One Sex Entertainment Co., WIPO Case No. D2000-0118.

The Respondent’s unauthorized and unapproved mis-direction of consumers searching for Kwandwe Private Game Reserve products and services to the Respondent’s pornographic website is solely for the purpose of achieving commercial gain, since users can be linked to pay sites. See Singapore Airlines Ltd. v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644.

The Complainant contends that taking into consideration that the Complainant’s company name and trademark is known worldwide and are well established, the Respondent knew or should have known of the Complainant’s trademark rights at the time of registration. Even if the Respondent did not have actual knowledge of the Complainant prior to its registration of the disputed domain name, the Respondent cannot escape the fact that it had constructive notice, namely because the prior content on the “kwandwe.com” website was the Complainant’s. This constructive knowledge is sufficient to support a finding of bad faith. See eBay, Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (noting that actual or constructive knowledge of Complainant’s rights in its trademark supports a finding of bad faith); see also Kate Spade LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (applying the principles of constructive notice to a finding of bad faith); see also Digi Int’l v. Digi Sys., NAF Claim No. 124506 (holding that there is a legal presumption of bad faith when Respondent reasonably should have been aware of Complainant’s trademark, actually or constructively). Thus, the Respondent should have reasonably been aware of the Complainant’s KWANDWE mark not only because of its selection of the identical mark for its domain name, but also because of the prior presence of the Complainant at the identical domain name.

The Panel in Caledonia Motor Group Ltd. v. Amizon, WIPO Case No. D2001-0860 has held that:

“The Complainant has also submitted that the use of the Domain Name to divert users to a pornographic website is evidence that the Respondent registered and is using the Domain Name in bad faith. The Panel is of the opinion that such conduct of the Respondent, given that the Domain Name itself has no pornographic or erotic connotations, evinces an intention to either attract the attention of the Complainant, disrupt the Complainant’s business or to damage the Complainant’s reputation. . . . [W]hatever the motivation of the Respondent, the diversion of the Domain Name to a pornographic site and the subsequent random diversions to sites unrelated to the Respondent, are certainly consistent with the finding . . . that the Domain Name was registered and is being used in bad faith.”

See also CCA Industries, Inc. v. Bobby R. Dailey, WIPO Case No. D2000-0148 (holding that “this association with a pornographic website can itself constitute a bad faith”). The term “kwandwe” is not indicative of any pornographic or erotically sexual connotations, and as such, regardless of the Respondent’s motivations, the diversion to pornographic materials evidences bad faith.

Based on the foregoing, the Respondent has registered and is using the <kwandwe.com> domain name in bad faith.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a Response, the Panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates in its entirety and without any modification the Complainant’s trademark KWANDWE, which is owned and has been commercially used and extensively and financially promoted by the Complainant in and for the purposes of its business and the sale of its services and products for several years. Thus, the disputed domain is identical to the Complainant’s mark (see Club Mediterranee v. Beaufort Holding Ltd., WIPO Case No. D2000-1564).

The Panel agrees with the Complainant’s contentions that the Complainant has well-established rights in its trademark KWANDE, which, based on the evidence and arguments adduced by the Complainant, the Panel accepts is well-known and enjoys a good reputation in its field of business within and beyond South Africa.

Thus, the use by the Respondent of the Complainant’s trademark in the disputed domain name will in all likelihood result in confusion in the marketplace amongst Internet users and potential consumers. In particular, the Panel notes that the Complainant owned and used the disputed domain name prior to the Respondent registering the same opportunistically, as described above by the Complainant, and, in consequence thereof, the Panel agrees that web browsers will be confused when they search for information on safaris and receive instead information about explicit pornography.

Furthermore, because the Complainant advertises the animals present in its reserve, and provides pictures and textual information about them and also offers site-seeing tours and encounters with various kinds of wildlife, consumers searching for this kind of information will also be confused - and probably offended - by the links on the Respondent’s website to animal pornography.

All such conduct on the part of the Respondent not only constitutes a clear misuse and infringement of the Complainant’s well-known trademark KWANDE, but is also a breach of the Policy.

In view of all this, the Panel finds that the domain name registered by the Respondent is identical to the trademark KWANDWE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has well-established and commercially valuable rights through registration, substantial financial investment in and promotion of its trademark, as well as exclusive commercial use of the same by the Complainant over several years for the purposes of its business.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

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

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s well-known trademark KWANDWE and the particular circumstances in which the Respondent registered the disputed domain name, as evidenced above by the Complainant, the Respondent must have known, when registering the disputed domain name that the Respondent could not have - or, indeed, claimed - any such rights or interests. Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known trademark KWANDWE as part of the disputed domain name.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the well-known business carried on by the Complainant. Although the Panel notes that in The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 it was held that “the linking of domain names to pornographic websites can constitute bona fide offerings of services for the purposes of paragraph 4(c)(i) of the Policy, the Panel considers that this decision may be distinguished from the present case as the Respondent clearly knew of the existence of the Complainant and its business activities for the reasons advanced above by the Complainant and accepted by the Panel.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering for sale on its website services and products which are diametrically opposed to and in certain respects disparaging of those being offered by the Complainant.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and, in view of the nature of the services and products offered by the Respondent, the consequential tarnishing of the Complainant’s valuable trademark and reputation. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and its trademark and unfairly attracting to its own business the substantial goodwill that the Complainant has established over several years in its mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its well-known trademark KWANDWE over several years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s considerable reputation in its particular field of business for the Respondent’s own purposes and benefits.

Again, by registering and using the domain name incorporating the Complainant’s trademark, KWANDWE, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, which, according to the evidence before the Panel, is certainly not the situation in the present case.

Indeed, using someone else’s well-known brand name to divert Internet users and consumers to websites offering products and services which detract from those offered by the Complainant and benefiting the Respondent directly and indirectly from so doing can hardly be described as acting in good faith. As was held in Caledonia Motor Group Ltd. v. Amizon, WIPO Case No. D2001-0860, the use of the disputed domain name to divert users to a pornographic website is evidence that the Respondent has registered and is using the Domain Name in bad faith, irrespective of the Respondent’s motivation. This is particularly so, as in the present case, where the disputed domain name itself has no pornographic or erotic connotations, and, as such, the Respondent’s use of the disputed domain name has the effect of harming the Complainant’s reputation and tarnishing its business and its valuable marks, which is also evidence of bad faith on the part of the Respondent (see ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215).

This is a classic case of “pornosquatting.” See Sparco S.p.A. v. Mr. Oleg Filipov. Guevreyan, WIPO Case No. DLA2003-0001 (October 9, 2003) (noting that pornosquatting has been held to be per se evidence of bad faith and includes the following elements: “(a) a trademark the ‘pornosquatter’ does not own is used; (b) the site to which the user is redirected is obviously pornographic; (c) the site is commercial, i.e. in order to access further pornographic images the Internet user is invited to pay; and (d) there is a ‘mouse-trapping effect’ making it more difficult for the casual Internet user to leave the pornographic website.”).

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also an indication of bad faith on the part of the Respondent.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the domain name at issue in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <kwandwe.com> be transferred to the Complainant.

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Ian Blackshaw
Sole Panelist

Dated: November 27, 2006