WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asian International Arbitration Centre (Malaysia) v. Mark Nowak

Case No. D2019-3139

1. The Parties

The Complainant is Asian International Arbitration Centre (Malaysia), Malaysia, represented by Lee Hishammuddin Allen & Gledhill, Malaysia.

The Respondent is Mark Nowak, United States of America.

2. The Domain Name and Registrar

The disputed domain name <klrca.org> is registered with Go Canada Domains, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2019, 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,

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.

The Center appointed Adam Taylor as the sole panelist in this matter on February 10, 2020. 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 an arbitration centre that was established in 1978.

The Complainant formerly traded under the name “Kuala Lumpur Regional Centre for Arbitration” as well as the acronym “KLRCA”. The Complainant also used as a logo consisting of these five letters in stylised form – the first four letters were in lower case; the fifth character was in the shape of a triangle akin to the top part of a capital letter “a”.

The disputed domain name was registered on June 11, 2013.

On April 24, 2014, the Complainant filed a UDRP case against a previous registrant of the disputed domain name, who was apparently using the disputed domain name for a website with pornographic content. On June 7, 2014, the UDRP panel ordered that the disputed domain name be transferred to the Complainant. See Kuala Lumpur Regional Centre for Arbitration v Mayuna Urade,ADNDRC Case No. HK-1400606.

At some point thereafter, the disputed domain name found its way into the hands of the Respondent. The Panel has not been told when or how this occurred.

The Complainant changed its name to its current name on February 28, 2018.

On October 18, 2019, the Complainant applied for a Malaysian trade mark for KRLCA in class 45. That application is still pending.

As of November 25, 2019, the disputed domain name was used for a website with a logo consisting of a device plus the acronym “klrca”, beneath which was the name “Kuala Lumpur Regional Centre for Arbitration”. The home page was dominated by the words “Over 25+ Years Of Experience in Arbitration”. Various dispute resolution services were offered on a page headed “Services”.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The Complainant has obtained strong and valuable goodwill in Malaysia and worldwide in the unregistered mark KLRCA. Despite its change of name, the Complainant maintains the KLRCA marks on materials and websites. The Complainant continues to own various domain names containing the acronym.

The disputed domain name reproduces the Complainant’s mark or dominant features thereof.

The content of the website at the disputed domain name, which offers the same services as the Complainant, supports the case for confusing similarity as does the fact that the disputed domain name amounts to a misrepresentation that it is associated with the Complainant.

The Respondent lacks rights and legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

The Complainant never authorised the Respondent to use its mark.

The Respondent is using the disputed domain name to advertise non-existent commercial services. This amounts to deliberate infringement of the Complainant’s trade mark. Such activities cannot entail a bona fide offering of goods or services.

The Respondent was very well aware of the Complainant’s ownership of its marks. The Respondent cannot have conceived of the disputed domain name without reference to the Complainant.

The Respondent set out to block the Complainant from using the disputed domain name and/or to tarnish the Complainant’s reputation and/or to profit unlawfully from the Complainant’s mark and/or to disrupt the Complainant’s business.

Use of the disputed domain name is likely to deceive the public into thinking that the disputed domain name is connected with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under the Policy, the Complainant is required to prove on the balance of probabilities that:

- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant’s pending trade mark application is not of itself sufficient to establish trade mark rights – see section 1.1.4 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

However, separately from its main trading name “Kuala Lumpur Regional Centre for Arbitration”, the Complainant has established common law rights in the term “klrca” arising from its extensive use of that acronym as a trading name and logo since 1978.

Is it relevant that the Complainant changed its name in February 2018?

Section 1.1.3 of WIPO Overview 3.0 makes clear that the relevant trade mark rights must be in existence when the complaint is filed – in this case on December 12, 2019. But, the Complainant’s common law rights did not simply evaporate when the Complainant changed its name in February 2018. The Complainant would have retained residual goodwill amongst customers who had known it by its previous names. While such residual goodwill would diminish over time, the Panel has little difficulty in concluding that it persisted as at the date of the Complaint – particularly given the length and extent of the previous use and the fact that the name change was relatively recent.

Furthermore, the Respondent has not filed a Response to contest the Complainant’s claim to trade mark rights.

The Panel concludes that, disregarding the domain name suffix, the disputed domain name is identical to the Complainant’s common law rights in the KLRCA trade mark and confusingly similar to the corresponding logo.

The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

As explained in section 2.1 of WIPO Overview 3.0 , the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.

Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.

Paragraph 4(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests in the disputed domain name.

As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.

Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.

The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

While it is not clear whether the Respondent is using the website at the disputed domain name to promote actual arbitration services or for some fraudulent purpose, it is nonetheless obvious to the Panel that the Respondent registered the disputed domain name with the Complainant in mind. Not only does the disputed domain name comprise an acronym of the Complainant’s trade name, the Respondent is also using the full version of the Complainant’s previous name on its website and is plainly out to impersonate the Complainant.

Furthermore, the Respondent has not come forward to deny the Complainant’s assertions of bad faith. It is difficult to conceive of any legitimate reason why the Respondent would wish to register the disputed domain name and the Respondent has offered no explanation.

The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.

The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

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 <klrca.org> be transferred to the Complainant.

Adam Taylor
Sole Panelist
Date: February 24, 2020