Complainant is Calvin Klein Trademark Trust of Wilmington, Delaware, Untied States of America; Warnaco Inc. of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
Respondent is Liu Wei of Shandong, People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010. On August 19, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 19, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 27, 2010.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on October 1, 2010. 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
Complainant is a world famous fashion designer, manufacturer and retailer of, among other articles, intimate apparel, men’s underwear and women’s underwear. In connection with its business, Complainant has used the CALVIN KLEIN and CALVIN KLEIN UNDERWEAR trademarks.
Complainant shows to be the holder of the following CALVIN KLEIN and CALVIN KLEIN UNDERWEAR trademarks:
- CALVIN KLEIN: United States trademark no. 1,633,261 filed on October 30, 1989, duly renewed on January 26, 2001 and on February 1, 2010 for various products in class 25;
- CALVIN KLEIN UNDERWEAR: United States trademark no. 3,320,669 filed on November 17, 2005, for various products in class 25;
- CALVIN KLEIN: Mexican trademark no. 615,908 filed on October 28, 1996, duly renewed (published in June 2006), for various products and services in class 25;
- CALVIN KLEIN: Community trademark no. 617,381 filed on August 21, 1997, duly renewed on August 21, 2007 for various products in classes 9 and 25;
- CALVIN KLEIN UNDERWEAR: Community trademark no. 8,713,018 filed on November 25, 2009 for various products in class 25;
- CALVIN KLEIN: Chinese trademark no. 1,681,239 filed on November 9, 2000 for various products in class 25;
- CALVIN KLEIN UNDERWEAR: Chinese trademark no. 6,453,139 filed on December 25, 2007 for various products in class 25;
- CALVIN KLEIN UNDERWEAR: Russian Federation trademark no. 377,787 filed on March 14, 2008 for various products in class 25.
It is stated in the WhoIs records that Liu Wei, Respondent in the instant case, is the current holder of the disputed domain name , which was registered on June 10, 2010 with GoD, Inc.
The disputed domain name is linked to a website offering for sale underwear products bearing the CALVIN KLEIN trademark.
On June 22, 2010 Complainant sent a cease and desist letter to Respondent requesting the transfer of the disputed domain name . Respondent did not reply to this letter and on August 18, 2010 Complainant filed a Complaint requesting the transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainant, Respondent has not used the disputed domain name in connection with a bona fide offering of services or a legitimate noncommercial use. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant.
Finally, Complainant considers 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, both from the terms of the Policy and the decisions of past UDRP panels, 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 transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.
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 will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant is the holder of the famous and widely-known trademarks CALVIN KLEIN and CALVIN KLEIN UNDERWEAR used to offer to consumers a wide range of goods in the field of clothing.
The disputed domain name only differs from Complainant’s CALVIN KLEIN UNDERWEAR trademark by the addition of a hyphen between the words ”calvin” and ”klein”. Previous panels have considered that the addition or deletion of a hyphen is an insignificant change, insufficient to reduce the identity or confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See T, Inc. v. Port-A-John, WIPO Case No. D2007-1497; Universal City Studios, Inc. v. HarperStephens,WIPO Case No. D2000-0716).
The Panel is also of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, where the addition of the generic word “machines” to complainant’s trademark CAT did not serve to distinguish the domain name ; Nike Inc. v. Farrukh Zia,WIPO Case No. D2000-0167, where the domain name was held to be confusingly similar to the trademark nike; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where the addition of the words ”mail”, ”post”, ” ‘fan” and ”top50” to the word ”POKÉMON” in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word ”POKÉMON”’; Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word ”games” in the domain name does nothing to reduce its confusing similarity with Nintendo’s POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).
The addition of the non-distinctive term “underwear” does nothing to reduce the confusing similarity of the disputed domain name with Complainant’s widely and well-known CALVIN KLEIN trademark.
For these reasons, the Panel finds that the disputed domain name is identical to Complainant’s trademark CALVIN KLEIN UNDERWEAR and confusingly similar to Complainant’s trademark CALVIN KLEIN.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
It is established in previous UDRP decisions that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the disputed domain name in order to shift the burden of proof to Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent does not appear to have acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
Moreover, the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant asserts that Respondent uses the disputed domain name to advertise and sell counterfeit goods. Such use is not a legitimate, noncommercial or fair use (See Philip Morris USA, Inc. v. ADN Hosting,WIPO Case No. D2007-1609, where the use of a mark in the domain name to confuse customers into buying counterfeit products was found as absence of legitimate rights). Although Complainant does not adduce strong evidence that the advertised goods on Respondent’s website are indeed counterfeit goods, the fact that Respondent never replied to this contention makes the veracity of this contention highly probable.
In any event, even if the advertised goods were to be genuine Calvin Klein products, Respondent has not shown itself to be a reseller that is authorized by Complainant to use the disputed domain name to resell the trademark holder’s products. Previous UDRP panels have held that the right to resell the trademark holder’s products does not create a right to use the trademark as the basis for a domain name without the express permission of the trademark holder (See Motorola, Inc. v. NewGate Internet, Inc.,WIPO Case No. D2000-0079). This Panel agrees, since Respondent does not have Complainant’s permission to use the domain name for this purpose, this Panel finds it has no legitimate interest in the domain name.
Moreover, even if the website linked to the domain name would sell only the trademarked goods – which is highly unlikely in the present case, given Respondent’s lack of response to Complainant’s contention that the website is used to sell counterfeit products – the site would also have to accurately disclose the registrant’s relationship with the trademark holder (See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc.,WIPO Case No. D2002-0095, where it was held that the site of a reseller must accurately disclose the registrant’s relationship with the trademark owner and that it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents). In the present case, Respondent does not accurately disclose its relationship with the trademark holder and even tries to give the impression that it is an official Calvin Klein website by giving a presentation of the company of Complainant on its homepage. Also for that reason the Panel is of the opinion that Respondent is not making a legitimate noncommercial or fair use of the domain name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the use of the domain name for intentionally attempting to attract, for commercial gain, Internet users to a web site 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 respondent’s web site or location or of a product or service on the web site or location. 1. Bad Faith Registration
In the instant case, it is impossible to conceive that Respondent could have coincidentally registered the disputed domain name without having knowledge of Complainant’s rights in the CALVIN KLEIN and CALVIN KLEIN UNDERWEAR trademarks at the moment he registered the disputed domain name, since Complainant’s trademark is a famous and widely-known trademark. Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. (See Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, supra where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of the complainant’s rights in the trademarks).
The Panel finds that since Respondent must have had knowledge of Complainant’s rights in the CALVIN KLEIN and CALVIN KLEIN UNDERWEAR trademarks at the moment he registered the disputed domain name, and since Respondent had no legitimate interest in the disputed domain name and moreover uses the disputed domain name for the sale of goods bearing the CALVIN KLEIN trademark, it is established that the disputed domain name was registered in bad faith. 2. Bad Faith Use
Pursuant to paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with complainant’s mark constitutes evidence of bad faith use of a domain name.
According to Complainant and confirmed by the Panel, Respondent is actively using its website to intentionally misdirect and attract for commercial gain Internet users searching for information about Complainant or searching for Complainant’s authorized goods and services by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location and of a product or service on Respondent’s website or location. Respondent creates this likelihood of confusion by displaying at the top of the homepage Complainant’s CALVIN KLEIN UNDERWEAR trademark, by prominently displaying the CALVIN KLEIN and CALVIN KLEIN UNDERWEAR trademarks throughout the website, by featuring numerous photographs of Complainant’s official products and by claiming for itself, as its own, Complainant’s legacy and reputation by providing a description of Complainant on the homepage linked to the disputed domain name. The Panel finds that it evidences bad faith to use a domain name identical to a trademark for a website selling products, all bearing said trademarks, without acknowledging the trademark rights of the trademark holder, when customers from the trademark holder’s own website are diverted and the likelihood of confusion is created (See Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344).
As this is presently the case, this clearly shows that the disputed domain name has not only been registered, but is also being used in bad faith. 7. Decision
For all 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 be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: October 14, 2010
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