Get Weird, LLC, v Kalu Madari
WIPO Case No. D2024-0795
•28-04-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Get Weird, LLC, v. Kalu Madari
Case No. D2024-0795
1. The Parties
Complainant is Get Weird, LLC, United States of America (“United States”), represented by ESCA Legal,
United States.
Respondent is Kalu Madari, United States.
2. The Domain Name and Registrar
The disputed domain name <antissocialsocialclub.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2024. On February 22, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 2024, 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 (Domain Admin, Whois protection, this company does not own this domain name s.r.o.) and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant notified the Center only to add the new Respondent on March 1, 2024.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2024.
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The Center appointed Scott R. Austin as the sole panelist in this matter on April 10, 2024. 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 following facts appear from the Complaint (as amended) and its attached Annexes, which have not been contested by Respondent, and which provide evidence sufficient to support:
Since its inception in 2015, Complainant has provided a range of fashion apparel products and accessories it refers to as “streetwear”, including their core product hoodies, which bear Complainant’s registered trademark ANTI SOCIAL SOCIAL CLUB (the “ANTI SOCIAL Mark”). Complainant also uses its ANTI SOCIAL Mark for its retail store services for the sale of such products both online and in stores, as well as an abbreviated form of its mark, “ASSC”, on its website.
Complainant asserts that its products have gained recognition and have emerged into a globally
recognizable pop culture symbol under the ANTI SOCIAL Mark and logo. As of 2023, Complainant has sold
three million units amongst a customer base of 1.6 million spread across 187 countries to which Complainant
ships its products. Complainant has also collaborated with word class brands in fashion, lifestyle and the
motorsports industry through which it has garnered worldwide attention.
Complainant also shows it incorporates the ANTI SOCIAL Mark into its official registered domain name <antisocialsocialclub.com>, registered since July 21, 2014, used to promote its products through its official website accessed at “ (the “Official ANTI SOCIAL Mark Website”). In addition to its official domain name and the Official ANTI SOCIAL Mark Website, Complainant has established a strong social media presence and shows in the Annexes to its Complaint that it has 2.5 million followers on Instagram.
Complainant owns a number of registrations in the United States and around the world for the ANTI SOCIAL
Mark for a range of products and services, including the following:
- United States Trademark Registration No. 5,046,740, ANTI SOCIAL SOCIAL CLUB, registered on sweatshirts in International Class 25, claiming a first use in commerce date of January 1, 2015;
- United States Trademark Registration No. 6,441,368, ASSC, registered on August 3, 2021, for a range of sportswear products in International Class 25, claiming a first use in commerce date of January 21, 2016; and
- United States Trademark Registration No. 6,449,103, ANTI SOCIAL SOCIAL CLUB, registered on August 10, 2021, for retail store services in International Class 35, claiming a first use in commerce date of August 25, 2015.
- European Union Trademark Registration No. 018260581, ANTI SOCIAL SOCIAL CLUB, registered on
November 27, 2020, for a range of goods and services in International Classes 9,10,14, 21, 24, 28, 34, and
35.
Respondent registered the disputed domain name on November 3, 2023, and it resolves to an impersonation or “copycat” website featuring Respondent’s unauthorized use of the ANTI SOCIAL Mark and Logo, purportedly selling counterfeit products bearing the ANTI SOCIAL Mark.
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5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name: that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to cancel a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the
requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1.
Complainant has demonstrated its rights because it has shown that it is the holder of numerous valid and
subsisting trademark registrations for its ANTI SOCIAL Mark. See Advance Magazine Publishers Inc., Les
Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
With Complainant’s rights in the ANTI SOCIAL Mark established, the remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s ANTI SOCIAL Mark. It is well accepted that the first element of the Policy functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
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Prior UDRP panels have also held “in cases where a domain name incorporates the entirety of a trademark,
or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain
name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
WIPO Overview 3.0, Section 1.7; see also, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO
Case No. D2011-1627; see also, Wal-Mart Stores, Inc. v. MacLeod d/b/a/ For Sale, WIPO Case No.
D2000-0662.
A side-by-side comparison between the disputed domain name and Complainant’s Mark shows the disputed domain name is almost identical to the ANTI SOCIAL Mark. Complainant’s ANTI SOCIAL Mark is incorporated in its entirety except the duplication of the letter “s” at the beginning of the first use of the term “social”. Complainant’s registered ANTI SOCIAL Mark is incorporated into and remains recognizable in the disputed domain name, followed only by the Top-Level Domain (“TLD”) “.com”. Prior UDRP panels have found the TLD, being viewed as a standard registration requirement, may typically be disregarded under the paragraph 4(a)(i) analysis. See, WIPO Overview 3.0, section 1.11.1; see also L’Oréal v. Tina Smith, WIPO Case No. D2013-0820.
WIPO Overview 3.0, section 1.9; See also Allstate Insurance Company v. Rakshita Mercantile Private Limited, WIPO Case No. D2011-0280; Humana Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073
Complainant contends that the disputed domain name must be considered confusingly similar to Complainant’s ANTI SOCIAL Mark and Complainant’s Mark remains recognizable within the disputed domain name. Prior panels have held that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. See
Based on the above, this Panel finds that the addition of the letter “s” for the first use of the term “social” in Complainant’s registered ANTI SOCIAL Mark does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s ANTI SOCIAL Mark.
Complainant’s ANTI SOCIAL Mark is recognizable as incorporated in its entirety into the disputed domain
name and for that reason the Panel finds the disputed domain name confusingly similar to the ANTI SOCIAL
Mark in which Complainant has rights. Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the second element of the Policy, a complainant is first required to make out a prima facie case that
the respondent lacks rights or legitimate interests in the disputed domain name. If a complainant makes that
showing, the burden of production on this element shifts to the respondent to come forward with relevant
evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward
with such evidence, a complainant is generally deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth
International, WIPO Case No. D2008-1393.
Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
First, it is clear from the record submitted that Respondent is not and has never been an authorized representative or licensee of Complainant nor is Respondent authorized by Complainant to register or use the ANTI SOCIAL Mark in any manner in a domain name or otherwise. Prior UDRP panels have found the fact that a respondent is not authorized to register or use a complainant’s mark, “on its own, can be sufficient to prove the second criterion [of the Policy]”. Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case
| No. D2000-0003 (finding no rights or legitimate interests where domain name incorporated complainant’s | registered mark and respondent was not a licensee of complainant). |
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Complainant has also shown that Respondent is not commonly known by the disputed domain name. The Registrar disclosed the underlying registrant as, “Kalu Madari”, which Complainant amended its Complaint to name as Respondent. Respondent bears no resemblance to the disputed domain name whatsoever. These facts combined with the well-known status of the ANTI SOCIAL Mark and the lack of evidence in the record to suggest otherwise allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii). See Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (“given Complainant’s established use of its… marks, it is unlikely that the Respondents are commonly known by any of these marks”).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows
that the disputed domain name is identical or confusingly similar to a complainant’s trademark, that the
respondent is not commonly known by the disputed domain name, and that a complainant has not
authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether
in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC, WIPO Case No.
D2007-1857.
Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s Annex evidence of web page printouts shows, the disputed domain name resolves to a website where Respondent is attempting to pass itself off as Complainant.
| Complainant’s argument because it shows Respondent’s website prominently features infringing copies of | The Panel notes that evidence submitted in the Annexes to the Complaint persuasively supports facts the Panel finds Respondent’s actions are clearly not legitimate and clearly are misleading and, therefore, Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525. |
| In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent | |
| does not have rights or legitimate interests in the disputed domain name and Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy. | |
| C. Registered and Used in Bad Faith | |
| Complainant first contends that Respondent registered the disputed domain name in bad faith because Respondent has created a domain name that is confusingly similar to Complainant’s globally well-known ANTI SOCIAL Mark, as found in section 6A above. Prior UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark reconfigured with an intentional misspelling of the complainant’s mark) to a widely known or famous trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4. |
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A prior UDRP panel recently found the ANTI SOCIAL Mark well known. See Age International, Inc. dba
Blanton Distilling Company v. Michael Chan, WIPO Case No. D2021-2292.
Given the record shows that Complainant’s well-known ANTI SOCIAL Mark is protected by trademark registrations around the world, the oldest of which was registered seven years prior to Respondent’s registration of the disputed domain name, which like Complainant’s official domain name <antisocialsocialclub.com>, encompasses the ANTI SOCIAL Mark in its entirety, the Panel finds it is implausible to believe that Respondent did not have actual knowledge of Complainant’s well-known ANTI SOCIAL Mark when it registered the confusingly similar disputed domain name.
Prior UDRP panels have held that a respondent’s actual knowledge of a complainant’s mark may serve as a basis for finding bad faith registration. See OSRAM GmbH v. Azarenko Vladimir Alexeevich, Azarenko Group Ltd, WIPO Case No. D2016-1384 (finding bad faith where “Respondent must have been aware of the Complainant and its said trademark when it registered the disputed domain name” and “the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant’s long-established trademark rights”). Accordingly, the Panel finds that Respondent had actual knowledge of the ANTI SOCIAL Mark when it registered the disputed domain name, and such a showing is sufficient to establish bad faith registration of the disputed domain name.
Further, as discussed in detail in section 6B and shown in Complainant’s Annex evidence, Respondent’s
website accessed at the disputed domain name includes a picture-perfect copy of sections of Complainant’s
Official ANTI SOCIAL Mark Website. In the circumstances of this case, where Respondent registered the
disputed domain name to engage in per se illegitimate activity, impersonating Complainant to attract Internet
users to Respondent’s site to sell competing and unauthorized goods for Respondent’s commercial gain, the
Panel finds such a showing is sufficient to establish bad faith registration and use. See, WIPO Overview 3.0,
section 3.1.4 (the use of a domain name for per se illegitimate activity is behavior to be manifestly
considered evidence of bad faith). See also Moncler S.r.l. v. Daniel Park, WIPO Case No. D2011-0488.
| been created to confuse consumers into visiting Respondent’s copycat site, leading them to believe it is | Bad faith use is also clear because Respondent’s website accessed through the disputed domain name, has website to sell unauthorized and competing products in violation of paragraph 4(b)(iv) of the Policy. |
| Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Complainant has met its burden under paragraph 4(a)(iii) 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 <antissocialsocialclub.com> be transferred to Complainant. | |
| /Scott R. Austin/ Scott R. Austin Sole Panelist Date: April 28, 2024 |
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