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WIPO Arbitration and Mediation Center

The Complainant in this administrative proceeding is Lichtwer Pharma AG, represented by Rechtsanwälte Burchert & Partner, Otto-Suhr-Allee 29, D-10585 Berlin, Germany.

The Respondent in this administrative proceeding is K 99 Inc., P.O. Box 756, Belize City, Belize n/a, Belize.

The disputed domain name is <kwai.com>. The Registrar of the domain name is Tucows, Inc. of Toronto, Ontario, Canada.

By registering the subject domain name with the an ICANN accredited Registrar, the Respondents agree to the resolution of disputes pursuant to the Policy and Rules.

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on October 29, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 31, 2001, by fax, on September 3, 2001, by hardcopy and on September 12, 2001, by email. The Center dispatched to the Registrar a Request for Registrar Verification on September 5, 2001. On September 14, 2001, having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center formally commenced this proceeding. On October 8, 2001, the Center issued a Notification of Respondent Default.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.

The following information is derived from the Complainant’s material.

The Complainant is a pharmaceutical company that deals, inter alia, with garlic pills.

The Complainant is the owner of the following German, IR, EU and US trademarks:

DE02905429 – KWAI - protected and used in classes 5, 29, 30 and 31 for pharmaceutical products containing garlic; dietary products for medical purposes containing garlic; dietary foods for medical purposes containing garlic; dietary foods for non-medical products containing garlic, as far as contained in Cl. 29, 30 and 31;

DT00723984 – KWAI - protected and used in class 5 for pharmaceuticals containing garlic;

DE39543995 – KWAI - protected and used in classes 5, 29 and 30 for pharmaceuticals; pharmaceutical products and preparations for health care; dietary products for medical purposes; dietary products for non-medical purposes and food supplements, all before-mentioned goods on vegetarian basis and on basis of vitamins, proteins, carbohydrates, minerals, trace elements, amino- and fatty acids, fish- and liver cod oil; dietary products for non-medical purposes and food supplements, all before-mentioned goods on basis of vitamins, proteins, carbohydrates, minerals, trace elements, amino- and fatty acids; dietary products for non-medical purposes and food supplements, all before-mentioned goods on vegetarian basis and on basis of vitamins, proteins, carbohydrates, minerals, trace elements, amino- and fatty acids, fish- and liver cod oil; dietary products for non-medical purposes and food supplements, all before-mentioned goods on basis of vitamins, proteins, carbohydrates, minerals, trace elements, amino- and fatty acids; dietary products for non-medical purposes and food supplements, all before-mentioned goods on vegetarian basis and on basis of vitamins, proteins, carbohydrates, minerals, trace elements, amino- and fatty acids, fish- and liver cod oil;

DT 01067469 – KWAI - protected and used in class 5 for pharmaceuticals, chemical products for healing purposes and health care, pharmaceutical drugs;

DE02016461 – Kwai Med - protected and used in class 5 for pharmaceuticals;

IR 593601– Kwai Med - protected and used in class 5 for pharmaceuticals in AT, BG, BX, CH, CZ, ES, FR, HR, HU, IT, LI, MC, PL, PT, RO, RU, SI, SK, SM, YU;

IR 637122 – KWAI - protected and used in classes 5, 29, 30 and 31 for pharmaceutical products containing garlic; dietary products for medical purposes containing garlic; dietary foods for medical purposes containing garlic; dietary foods for non-medical products containing garlic, as far as contained in Cl. 29, 30 and 31 in AT, BA, BG, BX, CH, CZ, ES, FR, HR, HU, IT, LI, MC, PL, PT, RO, SI, SK, SM, NO;

IR 490345 – KWAI - protected and used in class 5 for pharmaceuticals containing garlic in AT, BA, BG, BX, BY, CH, CZ, EG, ES, FR, HR, HU, IT, KZ, LI, MC, PT, RO, RU, SI, SK, SM, UA,YU;

European Community Trademark 201.335 – KWAI - protected and used in classes 5, 29 and 30 for pharmaceuticals, pharmaceutical products and preparations for health care; dietary products for medical purposes; dietary products for non-medical purposes; food supplements; dietary products for non-medical purposes; food supplements;

US Trademark 1452855 – KWAI - protected and used in class 5 (US class 18) for pharmaceutical preparations, namely extra-strength garlic pills for geriatric complaints; and arteriosclerosis.

The Complainant has not authorized the Respondent to use the word "kwai" and the Respondent is not known by it.

The subject domain name resolves to a pornographic Internet site, which is comprised of a number of locations. Only the opening page is connected to the subject domain name. Once at the site, an inexperienced user will have difficulty exiting and likely must shut down the computer.

The Respondent made no submission in this proceeding.

The Complainant relies on its registered mark and states that the subject domain name is identical to it. Noting the fact that subject domain name is unrelated to the Respondent’s name or to the pornographic business it carries on, the Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name.

Bad faith is said to be shown by the Respondent’s use of the subject domain name.

Although the Respondent did not submit a response, it did communicate with the Center, stating in part:

"We are the owner of kwai.com for many years.
If these people need the domain name we will sell it to them.
We worked on it many years to build traffic.
We do not understand what is the problem."

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights;

(ii) the Respondent has no legitimate interest in respect of the domain name;

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on it or a location.

These are illustrative and do not represent the only circumstances from which evidence of bad faith may arise.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

It is clear that the Complainant has rights to the word "kwai". The subject domain name is identical, but for the addition of ".com". That is not a distinguishing feature.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

The Respondent’s use of the subject domain name is unrelated to its name or the pornographic business it operates. Although it stated that it had developed traffic using the subject domain name, it appears to be willing to sell it. These facts support an inference that the Respondent does not have a legitimate interest in the subject domain name and the Respondent has provided no information, which leads to any other conclusion.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

The information concerning bad faith is very thin. The Complainant does not appear to have made any demand on the Respondent to stop using the subject domain name or to transfer it to the Complainant. Apart from the fact that the Complainant has registered trademarks in a number of jurisdictions, there is little evidence on which to conclude that the Respondent knew of the Complainant’s existence.

The conclusions that a Respondent has no legitimate interest in a domain name that is confusingly similar or identical to the mark of a Complainant does not establish that the domain name was registered and used in bad faith, but the facts that support those conclusions may be relevant to an administrative tribunal’s consideration of bad faith.

The Complainant relies solely on the fact that the subject domain name is identical to its mark and the Respondent’s use of the subject domain name.

Complainants who so proceed run a serious risk of having their complaints dismissed.

There is no information to indicate why the Respondent used the word "kwai". The fact that it did so does not lead to an inference of bad faith in the circumstances of this case, but is does raise suspicion.

The fact that the Respondent operates a pornographic site related to the subject domain name in not per se bad faith, but use of the subject domain name solely as an opening page also raises suspicion.

Although, the Respondent communicated with the Center, it made no response to the allegations made by the Complainant. Although, a respondent has no obligation to submit a response, insofar as asserted facts raise suspicion, they stand unrebutted and can support an inference of bad faith. The Respondent’s statement that it has developed considerable traffic through use of the subject domain name is not entirely consistent with its apparent willingness to sell the subject domain name to the Complainant.

This case is on the borderline, but considering all of the information made available to it, the Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

Based on the information provided to it and on its findings of fact, the Administrative Panel, concludes that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it. The Administrative Panel so orders.

Edward C. Chiasson, Q.C.
Sole Panelist

Dated: November 7, 2001