The Complainant is World Karate Federation of Madrid, Spain, represented by Mónica del Corral Alarcón, Spain.
The Respondent is World Union of Karate Do Organizations / Carlo Henke of Torino, Italy, internally represented. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Tucows, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2015. On April 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 14, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2015. The Response was filed with the Center on May 8, 2015.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on May 18, 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. 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 (the “Mark”).
The Respondent previously carried the name World Union of Karate-do Organizations (the Complainant’s former designation), before it amended the name of its organization to World United Karate Organization & Associated Disciplines.
According to undisputed information by the Complainant, the Respondent’s founder, Mr. Carlo 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. Furthermore, the First Board of Appeal of OHIM declared the figurative Community trademark WUKO, registered by Mr. Carlo Henke, to be invalid in a decision of June 2, 2010, and the figurative Community trademark WUKO, registered by a separate inidividual, Ms. Rita Meriti, to be invalid in a decision of September 5, 2014
The disputed domain names were registered, concerning , on December 4, 2014; concerning , on October 27, 2008 and concerning , on October 21, 2008. 5. Parties’ Contentions A. Complainant
(i) The disputed domain names are composed of the Mark, with also adding the suffix “ad”. The Complainant asserts that the addition of this suffix does not serve to distinguish the disputed domain name from the Mark, and only adds to the confusion.
(ii) The Complainant obtained recognition by the International Olympic Committee in 1999 as the official representative of karate in the world. The Complainant having been known under the acronym “WUKO” in the world of karate since 1972, the Respondent cannot assert any rights or legitimate interests in respect of the disputed domain names.
(iii) The contents of the successive decisions rendered by OHIM make it abundantly clear that the disputed domain names were registered and are used in bad faith.
(iv) The Complainant requests that the disputed domain names be transferred to the Complainant. B. Respondent
The Respondent did not submit any formal response to the Complaint, but had an email communication sent to the Center on May 8, 2015 by Mr. “Sean Henke - WUKO&AD Chairman”, alleging, inter alia, that “WUKO, World Union of Karate-do Organizations” is “an organization that no longer exists” and attaching the statute of “World United Karate Organization and Associated Disciplines”. 6. Discussion and Findings A. Language of the Proceeding and other procedural aspects
Paragraph 11(a) of the Rules provides that “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Registrar confirmed that the language of the Registration Agreement of the disputed domain name is
English. The Panel determines that pursuant to paragraph 11(a) of the Rules, the language of the proceeding is English.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain names have been met.
In this case, the Panel finds that the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant, as is described in further detail below. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain names, such as making a fair use of the disputed domain names.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith. B. Requirements of paragraph 4(a) of the Policy (i) Identical or Confusingly Similar
In comparing the disputed domain names , and with the Mark, the Panel finds that the Mark is replicated entirely in the disputed domain names.
The consensus view of UDRP panels is that the addition of generic or descriptive terms does not generally serve to distinguish a domain name from a registered trademark. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor,WIPO Case No. D2001-1367; Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672; and Allianz AG v. Marian Dinu,WIPO Case No. D2006-0318.
This view has been supported in respect of the Complainant by a previous UDRP decision (see World Karate Federation v. Carlo Henke, Wuko – World Union Of Karate Do Organizations,WIPO Case No. D2014-1687).
With respect to the disputed domain name , the Panel finds that the dominant component of the disputed domain name is “wuko”.
It is also well-established that the Top-Level of a domain name such as “.org”, “.biz” or “.info” does not generally affect the assessment of the domain name for the purpose of determining identity or confusingly similarity.
Consequently, the Panel finds that the similarity between the disputed domain names and the Mark is such as to create confusion for Internet users.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. (ii) Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of a right or legitimate interest in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant obtained recognition by the International Olympic Committee in 1999 as the official representative of karate in the world.
There are no indications before the Panel of any other rights or legitimate interests of the Respondent in respect of the disputed domain names. In particular, the Respondent could have chosen a designation (and domain names) sufficiently setting it apart from the Complainant when the Respondent was founded as a competing international karate organization.
Since the Complainant has been known under the acronym WUKO in the world of karate since 1972 and in light of the successful cancellation actions against the Respondent, the Respondent cannot assert any rights or legitimate interests in the disputed domain names for the purposes of this proceeding.
In the circumstances, the Panel concludes that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirement of paragraph 4(a)(ii) of the Policy. (iii) Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain names which are confusingly similar to the Mark.
According to undisputed information by the Complainant, the Respondent’s founder, Mr. Carlo 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”).
It is established in prior UDRP decisions that the registration of a domain name confusingly similar to a trademark by any entity that has no relationship to that trademark may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Pfizer Inc. v. NA,WIPO Case No. D2005-0072; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin,WIPO Case No. D2002-0440; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Research In Motion Limited v. Dustin Picov,WIPO Case No. D2001-0492.
In this case, the Panel notes that it is close to impossible that the Respondent chose to register the disputed domain names randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board,WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
Where the Respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may also suggest bad faith. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In addition, the Panel notes that many UDRP panels have held that bad faith use of a domain name by a respondent may also result from the fact that its good faith use is in no way plausible (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148), considering the specificity of the activity.
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others, and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer,WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex,WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141.
Taking into account the decisions issued by OHIM against the filings of Community trademarks WUKO by Mr. Carlo Henke and Ms. Merati respectively, and the fact that the Complainant has been recognized by the International Olympic Committee as the official representative of karate in the world, the Panel finds 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.
Moreover, the Panel considers that by sowing confusion with the Complainant and its Mark, the Respondent is disrupting the Complainant’s business (in particular, the Complainant’s attempts to have karate recognized as an Olympic sport) and is attempting to attract Internet users for commercial gain.
The Panel finds that the evidence submitted supports a finding of bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case. 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 names , and be transferred to the Complainant.
Louis-Bernard Buchman
Sole Panelist
Date: June 1, 2015
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