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World Black Belt, Inc. v. Mazar Ali Chawla [2004] GENDND 1339 (18 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

World Black Belt, Inc. v. Mazar Ali Chawla

Case No. D2004-0708

1. The Parties

The Complainant is World Black Belt, Inc., Tarzana, California, United States of America, represented by Stetina Brunda Garred & Brucker, United States of America.

The Respondent is Mazar Ali Chawla, America Systems USA, Inc., Dubai, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <worldblackbelts.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2004. On September 3, 2004, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the subject domain name. On September 7, 2004, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Complainant filed an amendment to the Complaint on September 13, 2004. 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”), 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 September 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6,  2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2004.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on October 14, 2004. The Administrative Panel finds that it was properly constituted. The panelist submitted a 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 following information derives from the Complainant.

This Complaint is based upon Complainant’s WORLD BLACK BELT trademark (United States Registration No. 2,729,778 on June 4, 2003). The WORLD BLACK BELT trademark is used in connection with the following goods: clothing, footwear and headgear, namely shirts, shorts, pants, hats, visors, caps, t-shirts, sweatshirts, jogging suits, coats; and nutritional and dietary supplements, vitamin preparations, nutrients and tonics, mineral preparations, energy replacement preparations all being nutritional supplements for use by athletes.

This Complaint is further based on the <worldblackbelt.com> domain name which promotes martial arts by providing a directory of martial art schools and offering for sale goods in related to martial arts.

The Respondent operates a website at “www.worldblackbelts.com“ to which the subject domain name resolves.

The goods and services offered via the Respondent’s website are similar to the goods and services associated with the Complainant’s trademark and which are offered on the Complainant’s website “www.worldblackbelt.com”. In particular, the Respondent offers martial arts lessons by providing a link to “www.tarzanakarate.com”. Tarzana Karate provides martial arts lessons as well as goods related to martial arts such as gloves and T-shirts.

The Respondent is not commonly known by the subject domain name, which was registered on December 6, 2003.

The Respondent’s website provides an endorsement by Bob Wall and Chuck Norris that was never given by Messrs. Wall or Norris

The Respondent did not participate in the proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its use and registration of the words “World Black Belt” and contends that the subject domain is identical to them.

Pointing to the facts that the Respondent is not commonly known by the subject domain name and uses it to attract customers to a competing website, the Complainant asserts that the Respondent does not have a legitimate interest in the subject domain name.

The Complainant relies on the facts related to the first two issues and the fact that unauthorized testimonials are used by the Respondent to support bad faith registration and use.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the trademark “WORLD BLACK BELT”. The subject domain name essentially is identical, but for the addition of the letter “s” and “.com”. The letter “.com” is of no consequence. At a minimum the former “s” supports a conclusion that the subject domain name is confusingly similar to the Complainant’s mark.

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

B. Rights or Legitimate Interests

Competition per se does not mean that a respondent does not have a legitimate interest in a domain name that may be confusingly similar to the mark of another, but it is relevant to the inquiry.

In this case, the competition is indirect, but this suggests an attempt to mask the relationship between the subject domain name and the interests of the Complainant. The use of unauthorized endorsements also affects adversely the legitimacy of the Respondent’s interest, although the material provides little information concerning the individuals concerned and there is no evidence to support the contention that they did not authorize the testimonials.

The Respondent does not appear to be known by the subject domain name or to have a direct business interest that relates to it.

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

C. Registered and Used in Bad Faith

A Respondent is not obliged to participate in a domain name dispute, but if it were not to do so, it would be vulnerable to the usual inferences that derive from the reasonable assertion of fact made by a complainant. Similarly, a finding that a respondent does not have a legitimate interest in a domain name, which is confusingly similar to the mark of another, does not lead to a conclusion of bad faith, but the facts that support the finding are relevant to the bad faith inquiry.

In this case, the information concerning the Respondent’s knowledge of the Complainant’s mark is not strong. The registration of the mark appears to have preceded the registration of the subject domain name by approximately 6 months.

In addition, there is no information to suggest that the Complainant asked the Respondent to cease using the subject domain name or asked that it be transferred to the Complainant.

The fact that the Respondent uses the subject domain name to divert customers to website other than the one to which the subject domain name resolves and its use of unauthorized testimonials, raises an inference of bad faith. The Respondent has done nothing to supplant that inference.

Although the Complainant’s case is weakened by a lack of information and verification, in the circumstances of this case the Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the subject domain name <worldblackbelts.com> be transferred to the Complainant.

Edward C. Chiasson Q.C.
Sole Panelist

Dated: October 18, 2004