The Complainants are Calvin Klein Trademark Trust and Warnaco Inc. of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Tahir Irshad of Hong Kong, SAR 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 January 20, 2011. On January 21, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 21, 2011, GoD, Inc. transmitted by email to the Center its verification response, confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2011.
The Center appointed John Katz QC as the sole panelist in this matter on March 11, 2011. 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 Complainants are the registered owners and beneficial owners of various rights to the trade marks, trading name and style CALVIN KLEIN held by the Complainant Calvin Klein Trademark Trust. There are a number of registered trade marks in the United States of America, European Union and the People’s Republic of China together with a number of registrations in over 150 countries worldwide. The Complainants also operate a website accessed via the domain name .
The trade mark registrations and website all predate the registration of the disputed domain name which occurred on September 9, 2010.
The Complainants have themselves and through predecessors in title a trading history going back to at least 1968. The various CALVIN KLEIN trade marks have been used on underwear since 1982.
Substantial sales are generated worldwide of Calvin Klein branded goods, including underwear, via various distribution channels around the world and an online presence through the Complainants’ own website.
The Respondent operates a website accessed via the disputed domain name, offering for sale Calvin Klein branded underwear. 5. Parties’ Contentions A. Complainants
The Complainants contend that the CALVIN KLEIN trade mark is famous. The mark CALVIN KLEIN is fanciful and arbitrary and has acquired very considerable goodwill such that it is distinctive and any use of it would inevitably be associated with the Complainants.
Thus, any person seeing or finding out about the Respondent’s website and even more so when accessing it online, would assume, contrary to the fact, that it was in some way associated with or authorized by the Complainants; further that the goods offered by the Respondent on its website were genuine Calvin Klein branded goods, authorized or licenced by the Complainants. The Complainants believe that the goods so offered by the Respondent are likely to be counterfeit. B. Respondent
Because the Respondent has defaulted it has not put before the Panel any evidence. The Complainants did send a cease and desist letter to the Respondent in connection with the disputed domain name. That letter of November 16, 2010 drew no response from the Respondent. As can be seen the letter was sent promptly following registration of the disputed domain name.
It is however a simple enough exercise to access the Respondent’s website and see for oneself the images, drop down menu and screens, products on offer and services available. To that extent some insight can be gained into the activities of the Respondent.
The website at the disputed domain name is reasonably sophisticated. It clearly displays the Calvin Klein name and in its distinctive font, including the CALVIN KLEIN trade mark. Some of the text may suggest it was created by a non native speaker of English which might lead to the inference that it is unauthorised and that the products on offer are unlicensed and possibly not genuine products.
The Respondent clearly actively uses the disputed domain name as it defaults to the website. 6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the Complainants will provide such supporting evidence as is necessary to make out their case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by the complainant to warrant relief. A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainants have rights.
The Complainants must establish that they have such rights either to common law or registered trade marks or service marks and that those rights are being abused by the Respondent.
The Complainants have a number of trade mark registrations in various jurisdictions, including China. These trade marks are for the word mark alone CALVIN KLEIN and the particular font (stylised letters).
Whilst no evidence has been put on by the Complainants as to the international or regional advertising, aggregated ad spend, sales or turnover, any person at all familiar with the clothing/apparel industry including underwear, would be well aware of the Complainants’ trade mark and its fame. It would be idle to suggest that, as the name of a living person, it has not become internationally famous and associated with goods, products and services connected with that name and the proprietors of the right to use the name as a trading device or trade mark. So much so, this Panel finds it is a truly famous or well-known mark in trade mark terminology that signals a connection or association with just one source. That of course is of the essence of trade mark law and what it is designed to protect, consistent also with the Policy.
The disputed domain name is . The Complainants’ domain name is . It can be seen that the only difference is the addition by the Respondent of the descriptor “buy” as a prefix. Such an addition is logical and will immediately be understood by any person interested as signifying an online shop or business where Calvin Klein underwear can be purchased. It is therefore in that sense purely descriptive of the service offered in relation to the trade marked product.
The suffix “.com” is of no relevance as it merely signifies the type of website and is in any event an identical suffix to that used by the Complainants.
There can be no possible room for argument but that the Complainants have established their reputation and resultant goodwill in their trade mark portfolio and are entitled to protect it.
The Respondent has registered the disputed domain name in a form that is for all practical purposes identical with that of the Complainants. As pointed out the only difference is the prefix used by the Respondent of the descriptive word “buy”.
Even though not directly applicable under the UDRP1, the Panel notes that there is a considerable body of case law in relation to what constitutes the same or identical mark in trade mark jurisprudence.
In the European Court decision of LTJ Diffusion SA v Sardas Vertdaubet SR [2003] FSR 34 the Court considered what constituted use of an identical mark. It held that a mark used by a respondent is identical with a complainant’s mark if the former “reproduced without any modification or addition all the elements constituting the trade mark or, where, viewed as a whole, it contains differences so insignificant that they go unnoticed by an average consumer”.
The Panel considers this statement equally applicable to the facts of the present Complaint filed under the UDRP. If one looks at the disputed domain name from the viewpoint of whether or not when viewed as a whole it contains differences so insignificant that they go unnoticed by the average consumer, it must follow that the disputed domain name incorporates the identical mark to that for which the Complainant has protection.
However, even if that was not so there can be absolutely no quarrel with the argument that the disputed domain name is confusingly similar. This must especially be so where the difference is of such a minor nature that to most people it would go unnoticed or at best would simply, if noticed, be dismissed as inconsequential.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out. B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trade marks in suit thereby justifying a proprietory right to the disputed domain name.
Under paragraph 4(a)(ii) a respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no rights or legitimate interests.
The Complainants have stated that they have not licensed or authorized the use of their marks by the Respondent.
The Panel finds that there is no evidence of any rights or legitimate interest that the Respondent may have.
The Complainants contend that it is unlikely the Respondent is in fact offering for sale genuine or legitimate Calvin Klein products. In any event other UDRP panels have held that an authorized reseller of a trade marked product does not by that alone and without more have the right to use the registered proprietor’s trade mark (see Motorola, Inc. vs NewGate Internet, Inc.,WIPO Case No. D2000-0079).
Even if the Respondent is offering for sale genuine Calvin Klein product (a point that does not need to be decided for present purposes) it is clear that the Respondent is not an authorized agent or reseller. Even if reselling genuine product by virtue of some claim to having bulk buying arrangements with factories producing genuine Calvin Klein branded products, this Panel finds that does not constitute under the Policy a right or legitimate interest (see Philip Morris USA Inc. v. ADN Hosting,WIPO Case No. D2007-1609).
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out. C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainants.
Any person who came across the Respondent’s disputed domain name would immediately assume that it was a domain name owned and operated by the Complainants, contrary to the fact.
It is simply impossible that the Respondent was not well aware of the Complainants’ trade mark and their goodwill. That is put beyond any doubt as the Respondent on its own website is offering for sale identically branded but unauthorised Calvin Klein underwear.
The registration of the disputed domain name of September 9, 2010 post dates by a very wide margin the Complainants’ trade mark registrations and their own website. It also post dates the Complainants’ trade mark registrations in China.
There can be no accidental or coincidental registration and use of the disputed domain name. The only possible conclusion therefore is that the Respondent has registered and is clearly using (via its offering for sale and shipping of Calvin Klein branded product) the disputed domain name for the purposes of enriching himself by trading off the enormous goodwill of the Calvin Klein name, to the detriment of the Complainants.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out. 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 domain name be transferred to the Complainants.
John Katz QC
Sole Panelist
Dated: March 25, 2011
Full & Egal Universal Law Academy