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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

World Karate Federation v. Carlo Henke, Wuko - World Union Of Karate Do Organizations

Case No. D2014-1687

1. The Parties

The Complainant is the World Karate Federation of Madrid, Spain, represented by Mónica del Corral Alarcón, Spain.

The Respondent is Carlo Henke, Wuko - World Union of Karate Do Organizations of Cannobio, Italy.

2. The Domain Name and Registrar

The disputed domain name <wukokarate.org> is registered with Tucows Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2014. On September 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On October 8, 2014, the Complainant requested that the applicable remedy be transfer.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 October 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2014. The Center received an email communication from the Respondent on October 31, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of the panel appointment process on November 6, 2014.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on November 14, 2014. 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 is the World Karate Federation, previously known as the World Union of Karate-do Organizations ("WUKO"). The Complainant submits to have used the name "WUKO" since 1972.

The Complainant is the owner of various WUKO trademarks dating back to 2006, in particular, the Community trademark No. 5121033 WUKO, filed on June 7, 2006, and currently in force, registered services in class 41.

The Respondent previously carried the name World Union of Karate-do Organizations (the Complainant's former designation), before it changed the name of its organization to World United Karate Organization & Associated Disciplines. According to undisputed information by the Complainant, the Respondent's founder, Mr. Henke, used to be a member of the Complainant's organization, before he founded his own Karate organization.

The Respondent applied for Community trademark No. 4360889 WUKO on April 27, 2005 (registered on April 28, 2006). A request for declaration of invalidity to that trademark was filed by the Complainant on October 10, 2007, before the Office of Harmonization for the Internal Market ("OHIM"). The Complainant's request was upheld by OHIM and the Respondent's trademark was declared cancelled on December 18, 2008.

The disputed domain name was registered on October 21, 2008.

5. Parties' Contentions

A. Complainant

In summary, the Complainant alleges the following:

The disputed domain name is composed of the Complainant's trademark WUKO and the descriptive term "karate". Such generic term does not serve as a differentiating element, but rather creates further confusion. For example, the organization of "world championships" by the Respondent has caused a great deal of uncertainty and confusion with respect to the results of the genuine championships organized by the Complainant.

The Complainant obtained recognition by the International Olympic Committee in 1999 as the official representative of karate in the world. Since the Complainant has been known under the acronym "WUKO" in the world of karate since 1972, the Respondent cannot assert any legitimate right to this trademark.

On December 22, 2008, the trademark WUKO registered by the Respondent was declared invalid on the grounds that it had been registered in bad faith. Furthermore, the Office of Harmonisation in the Internal Market ("OHIM") declared the Community trademark WORLD UNITED KARATE ORGANIZATION, registered by the Respondent, to be invalid in a decision of September 5, 2014. These decisions prove that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not submit any formal response to the Complaint, but sent an email communication to the Center on October 31, 2014 pointing out, among others, that Respondent had used the disputed domain name for the last six years without any objections.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is the owner of the registered trademark WUKO. The disputed domain name consists of the Complainant's trademark plus the generic word "karate".

According to the consensus view of UDRP panels, the addition of generic terms, such as "karate", to a trademark in a domain name is normally insufficient in itself to avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9). In addition, it must be taken into account that the term "karate" directly describes the field of activity of both parties.

The Panel considers that the disputed ddomain name is identical or confusingly similar to the trademark in which the Complainant has rights, and therefore, the Complainant has fulfilled paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant obtained recognition by the International Olympic Committee in 1999 as the official representative of karate in the world. Since the Complainant has been known under the acronym WUKO in the world of karate since 1972, the Respondent cannot assert any legitimate right to this trademark.

There are no indications before the Panel of any other rights or legitimate interests of the Respondent in respect of the disputed domain name. In particular, the representatives of Respondent could have been expected to choose a designation (and domain name) which sufficiently sets it apart from the Complainant when the Respondent was founded as a competing international karate organization.

Based on the case file, the Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to undisputed information by the Complainant, the Respondent's founder, Mr. Henke, used to be a member of the Complainant's organization before he founded his own Karate organization. The name he chose for his own organization is exactly the same as the Complainant's former designation ("World Union of Karate-do Organizations").

Taking into account the decisions issued by the OHIM against the Respondent's filing of the Community trademarks WUKO and WORLD UNITED KARATE ORGANIZATION (cf. Section 5.A above) and the fact that the Complainant has been recognized by the International Olympic Committee as the official representative of karate in the world, it is evident that the Respondent is attempting to pass off as the official worldwide karate organization and is thereby creating confusion for karate athletes around the world. Thereby, the Panel considers that the Respondent is disrupting the Complainant's business (in particular, the Complainant's attempts to have karate recognized as an Olympic sport) and most probably attempting to attract Internet users to its website for commercial gain (membership fees, organization of championships, etc.) by creating confusion with the Complainant and its trademark WUKO. Such conduct constitutes bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.

Accordingly, the Complainant has also satisfied paragraph 4(a)(iii) of the Policy.

D. Delay in Bringing the Complaint

The Respondent has objected to the Complaint on the basis that six years have passed since the disputed domain name was registered.

UDRP panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. On the other hand, UDRP panels have also noted that a delay in bringing a complaint under the UDRP may make it more difficult for a complainant to establish its case on the merits, particularly in relation to the second and third elements requiring the complainant to establish that the respondent lacks rights and legitimate interests and that the respondent registered and used the domain name in bad faith (cf. on the above WIPO Overview 2.0, paragraph 4.10).

In the present case, no facts in the record indicate any basis for altering the Panel's analysis simply because of the time that elapsed between registration of the disputed domain name and commencement of this proceeding.

7. Decision

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

Tobias Zuberbühler
Sole Panelist
Date: November 21, 2014

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