The Complainants are KWM Brands Pte Limited of Singapore, Singapore, represented by King & Wood Mallesons, Australia, and King & Wood Mallesons of Sydney, New South Wales, Australia, internally represented.
The Respondent is Whois Agent, WhoIs Privacy Protection Service Inc. of Kirkland, Washington, United States of America (“United States”) / Name Redacted.1
The disputed domain name <kwmallesons.com> is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2017. On September 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 8, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2017, 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 September 13, 2017.
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 Respondent of the Complaint, and the proceeding commenced on September 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on October 11, 2017. 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 First Complainant, KWM Brands Pte Ltd, is a company incorporated in Singapore and the owner of registrations in several jurisdictions for the trade marks KWM and KING & WOOD MALLESONS (the “Trade Mark(s)”), including Australian registration No. 1465539 for the Trade Mark KING & WOOD MALLESONS, and Australian registration No. 1465547 for the Trade Mark KWM, both registered since December 15, 2011.
The Second Complainant, King & Wood Mallesons, is the Australian partnership of the global law firm King & Wood Mallesons, and a user of the Trade Marks under licence from the First Complainant.
The identity of the Respondent is unknown.
The disputed domain name was registered on August 10, 2017.
The disputed domain name has not been resolved to any website. The Respondent has used the disputed domain name to send letters by email in the name of the Second Complainant, and impersonating one of the partners of the Second Complainant, in an attempt to fraudulently pass off the Respondent as the Second Complainant.
The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, 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. The Complainant requests an order that the disputed domain name be transferred to the Second Complainant.
The Respondent did not reply to the Complainant’s contentions.
Past UDRP decisions suggest that a complaint may be brought by multiple complainants where (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
In the present proceeding, the First Complainant is the owner of the Trade Marks, the Second Complainant is a licensed user of the Trade Marks, and the Respondent is fraudulently passing itself off as the Second Complainant in order to engage in fraudulent activities. The Complainants have common grievances against the Respondent, and the Respondent has engaged in common conduct that has affected the Complainants’ rights in a similar fashion.
In all the circumstances, the Panel determines, under paragraph 10(e) of the Rules, that consolidation of the Complainants is procedurally efficient and equitable to all the Parties, is consistent with the Policy and Rules, and comports with prior relevant UDRP decisions in respect of this issue2 .
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name incorporates the entirety of the Trade Mark KWM, and the dominant feature of the Trade Mark KING & WOOD MALLESONS is recognisable in the disputed domain name (see WIPO Overview 3.0, section 1.7).
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Marks.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain name in order to set up an elaborate and fraudulent Nigerian Email Scam.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
In light of the Respondent’s registration and use of the disputed domain name in respect of the Respondent’s fraudulent Nigerian Email Scam, the Panel has no hesitation in concluding that the disputed domain name has been registered and is being used in bad faith.
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 <kwmallesons.com> be transferred to the Second Complainant3 .
Sebastian M.W. Hughes
Sole Panelist
Dated: October 25, 2017
1 The Respondent has registered the disputed domain name using the name and contact details of a partner of the Second Complainant. In light of the Complainants’ uncontested evidence of such identity theft, the Panel has decided to redact the Respondent’s name from the caption and body of this Decision. However, the panel has attached as Annex 1 to this Decision an instruction to the Registrar which includes the name of the Respondent. The Panel has authorised the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published due to the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
2 The Panel shall refer to the Complainants in the singular for the remainder of this Decision.