WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KWM Brands Pte Limited and King & Wood Mallesons v. Registration Private, Domains By Proxy, LLC / Name Redacted
Case No. D2015-1452
1. The Parties
The Complainants are KWM Brands Pte Limited of Singapore, Singapore and King & Wood Mallesons of Sydney, New South Wales, Australia, represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("United States") / Name Redacted of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name, <au-kwm.com> (the "Domain Name"), is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 18, 2015. On August 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 19, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 21, 2015.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on September 17, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 25, 2015. 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.
The Complainant, KWM Brands Pte Limited is the registered proprietor of the KWM trade mark upon which the Complainants rely in this case. The Complainant, King & Wood Mallesons, an Australian partnership, uses that trade mark with the consent of and under licence from KWM Brands Pte Limited. The Panel accepts that it is appropriate (in the circumstances of this case) that the Complainants have a common grievance against the Respondent(s), that this is essentially a single complaint and that the Complainants should be treated as one for this purpose. Accordingly, all references hereinafter to the "Complainants" are references to either or both of them as the context requires.
As will be seen below, the Panel is satisfied that the beneficial owner of the Domain Name, who used a privacy service and false contact details to conceal his identity, intentionally registered the Domain Name in the name of a partner of King & Wood Mallesons in an attempt to defraud that individual. Neither the privacy service nor the King & Wood Mallesons partner in question had any part to play in the registration of the Domain Name or its subsequent use. The Panel proposes to treat as the sole Respondent in this case the beneficial owner of the Domain Name, the underlying registrant, whose name and address (albeit a false name and address) have been disclosed by the Registrar as being the name and address appearing on the Registrar's WhoIs database. As is customary where the name of an innocent individual has been adopted for the purpose of impersonating that individual (see for example, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890), the Panel has requested that that individual's name be redacted from the record of this proceeding. The Panel requests the Registrar to execute the transfer of the Domain Name in accordance with the direction in section 7 below and accepting that "Name Redacted" in this decision refers to the name of the individual with an address in New York specified as the registrant in the Registrar's response to the Center's verification request and referred to hereinafter as the "Respondent". Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
4. Factual Background
The Complainants are/include a national law firm of repute in Australia. The Complainants are the registered proprietors of inter alia Australian Trade Mark Registration No. 1465547 KWM (word) dated December 15, 2011 (registered January 14, 2013) for a wide variety of goods and services in classes 9, 13, 35, 36, 38, 41, 42, and 45.
The Domain Name was registered on July 8, 2015 and was used that same month in an attempt to defraud one of the Complainants' partners. For that purpose the Domain Name was registered in the name of the partner concerned and for the reasons set out in section 3 above his name has been redacted from the record of this proceeding. The matter has been reported to the police by the Complainants. The Panel has been informed, and accepts, that it will not be helpful to relate the detail of the attempted fraud in this decision.
5. Parties' Contentions
The Complainants contend that the Domain Name is confusingly similar to the Complainants' KWM registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainants must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises (i) "au", a familiar abbreviation for Australia, (ii) a hyphen, (iii) the Complainants' trade mark and (iv) the generic ".com" top level domain identifier. The Domain Name features a reproduction of the Complainants' trade mark, none of the additional material in any way detracting from the distinctiveness of the Complainants' trade mark.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainants have rights.
C. Rights or Legitimate Interests
As will have been seen in sections 3 and 4 above the Panel is satisfied that the Respondent, using a false name and address, registered the Domain Name in an attempt to impersonate one of the partners of the Complainants and with the intention of defrauding that individual.
Self-evidently, the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
On the same basis the Panel finds that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <au-kwm.com>, be transferred to the Complainant, King & Wood Mallesons.
Date: October 3, 2015