Recent Case Notes & Commentary

IS SWAK THE SAME AS KAWS? OR CONFUSINGLY SIMILAR? OR ARE YOU JUST CONFUSED?

KAWS Inc. v. Martin / Jordan Edward / Edward Jordan

Claim Number: FA2202001986310, FORUM, 30 March 2022


The basic and seemingly simple question in UDRP domain name cases is the first one, namely is the domain name identical or confusingly similar to the trademark relied on by the complainant? Those cases where it is identical are obvious; the domain name is either identical or it is not. There is no need to have decisions or so-called precedents to help you on that issue.


But if the domain name is not identical to the trademark, the complainant may still be able to show that it is, nevertheless, confusingly similar to the trademark, meaning that it is similar and, also, confusingly so. That question is not so straightforward. And tricky questions often arise. They arise in simple cases where the respondent has decided to fool around with the spelling of the trademark by re-arranging the letters or changing them slightly. Thus, if the trademark includes the word “BANK”, say in the trademark ABC BANK and the domain name registered by the Respondent includes the word “bunk” or “bakn”, say in <abcbakn.com>, it looks as if the respondent registered the domain name because it had a bank in mind and a particular bank.


In other words, if a word in the trademark is spelt backwards in the domain name, as it is in <abcbakn.com>, an objective internet user would probably conclude that the domain name is confusingly similar because the trademark ABC BANK is readily recognised in the domain name, leaving the internet user confused as to whether the domain name is a genuine domain name of the trademark owner or not.


Previous decisions are not much help in resolving such issues, as every case is different. They are not precedents, but they are a guide to how panellists think about such issues. A recent decision illustrates this issue: is SWAK the same as KAWS? The question was important because the respondent was pretty clearly aiming at the trademark owner of KAWS and its trademark and it actually admitted as much on its website, no doubt as a sales ploy to show that its products had a “genuine” origin. The trademark was KAWS. The trademark owner was KAWS Inc., who owned the intellectual property in the art works of Brian Donnelly who was widely known as KAWS.


Two domain names were registered within a few weeks of each other. One was <kawsfarm.com> which could be thought to invoke Donnelly and his KAWS works and the notion of farming them out or perhaps developing them, as in “farming” them. This was held to be confusingly similar to the trademark KAWS because the trademark was there, in the domain name, for all to see and it coloured the meaning of the domain name as the farming of KAWS works. Nor could the presence of the word “farm” negate such a conclusion.


But the other domain name was a bit trickier because it was <swaknft.com> and not so obviously confusingly similar to KAWS. The argument was that the registrant had reversed the spelling of KAWS to get “swack” and the panellist[1] accepted that this had been done.


The rest of the domain name probably helped that conclusion being reached, as it was “nft”, widely understood to stand for “non fungible token”, including when it is used, as it is in these enlightened days, in referring to works of art such as those by Mr Donnelly, known as KAWS.


So, the domain name, at least to aficionados of Brian Donnelly, was taken to mean non fungible tokens derived from works of art by Brian Donnelly who works under the name KAWS. It might not be the regular way of resolving such issues under this first element of the UDRP, but it might be that the Complainant was helped by the evidence that third parties and the website of <swaknft.com> itself had acknowledged that “Swack” was derived from KAWS.


Thus, the Complainant had won on the first element of the UDRP because both <kawsfarm.com> and <swaknft.com> were confusingly similar to the trademark KAWS. (It went on to win under the other two elements of the UDRP as well and the domain names were transferred to the Complainant).


For our purposes, you could say that what comes out of this case is that if it can be reasonably seen that the domain name is a re-arrangement of the letters in a trademark, the former is confusingly similar to the latter because some internet users would be confused as to whether the domain name was the genuine article or not.


Question: how would you have decided this case?

[1] The Hon Neil Brown QC