The Complainants are Calvin Klein Trademark Trust, Warnaco Inc. of New York, United States of America, (together the “Complainant”) represented by Katten Muchin Rosenman LLP, United States of America.
The Respondent is Chen Jian Rong of Putian, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names are , , , and (the “Disputed Domain Names”). The Disputed Domain Names and are registered with Xin Net Technology Corp while the Disputed Domain Names , , and are registered with Jiangsu Bangning Science & technology Co. Ltd. (together the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2011. On October 14, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On October 15, 2011, and October 17, 2011, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On October 18, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On October 20, 2011, the Complainant confirmed its request that English be the language of the proceeding. On October 18, 2011, the Respondent sent an email communication to the Center in Chinese, however, the Respondent did not comment on the language of the proceeding.
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 October 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2011. The Respondent did not submit any response. Accordingly, the Center confirmed that no further email communications were received from the Respondent on November 14, 2011.
The Center appointed Kar Liang Soh as the sole panelist in this matter on December 7, 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 Complainant is a designer, manufacturer and retailer of, among other articles, intimate apparel under the trademark CALVIN KLEIN. The Complainant and its predecessor have been using the trademark CALVIN KLEIN since 1968. The Complainant has been using the trademark CALVIN KLEIN UNDERWEAR since 1982. The CALVIN KLEIN UNDERWEAR trademark is also used online on the website under the domain name . The trademarks CALVIN KLEIN and CALVIN KLEIN UNDERWEAR have been used in over 190 countries and regions in connection with which the Complainant owns various trademark registrations, including the following:
Jurisdiction Trademark No. Registration Date
United States
1633261
January 29, 1991
CTM
617381
January 29, 1999
China
1681239
December 14, 2001
The Disputed Domain Names were all registered between November 29, 2010 and February 25, 2011. As around the time of the Complaint, all the Disputed Domain Names resolved to websites which purportedly provided online store facilities for purchase of underwear under the Complainant’s marks. The websites feature the Complainant’s marks prominently and incorporate the use of photographs and descriptions by product line of the Complainant goods.
On September 7, 2011, the Complainant sent a demand letter to the Respondent’s email addresses associated with the WhoIs record details of the Disputed Domain Names, requiring the Respondent to cease and desist from use of the Complainant’s marks and to transfer the Disputed Domain Names. The Respondent did not reply to the same. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
a) The Disputed Domain Names are confusingly similar to the Complainant’s marks. The words “boxers”, “uk”, “underwear” added to the words “Calvin Klein” in the Disputed Domain Names are generic terms which do not mitigate confusing similarity between the Disputed Domain Names and the Complainant’s marks;
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The Respondent has no agreement with the Complainant authorizing the Respondent to use the Complainant’s marks. The Respondent does not own any trademark registrations for the words CALVIN KLEIN or CALVIN KLEIN UNDERWEAR and the Respondent is not commonly known by the Disputed Domain Names; and
c) The Respondent registered and is using the Disputed Domain Names in bad faith. The Complainant’s marks are well-known. The Respondent could not have registered the Disputed Domain Names coincidentally. The Respondent is using the Disputed Domain Names to misdirect and attract for commercial gain Internet users searching for the Complainant’s goods and services by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and of products on the Respondent’s websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the proceedings
The Complainant requests that the proceedings be conducted in English even though the default language of the proceedings should be Chinese in view of the language of the registration agreement being in Chinese. Having regard to circumstances, in particular the following, the Panel determines that English be adopted as the language of the proceedings:
a) The websites resolved from the Disputed Domain Names whether directly or by redirection were entirely in English. The Respondent appears to be familiar with English or has the means to deal adequately with the English language;
b) Although the Respondent enquired on the consequence of the proceedings following the Center’s communication regarding the language of proceedings, the Respondent has chosen not to respond to the Complaint or made known any preference for the language of the proceedings;
c) The Complainant has already been submitted in English and it would be financially onerous on the Complainant to translate the Complaint into Chinese; and
d) There does not appear to be any procedural benefit that may be achieved by insisting on the default language of the proceedings and it is likely that delay to the proceedings would result should parties be required to re-submit documents in Chinese. 6.2. Discussion
In order to succeed in the proceedings, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy. The Panel proceeds to consider each of these limbs below. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel agrees that the Complainant has trademark rights in the marks CALVIN KLEIN and CALVIN KLEIN UNDERWEAR. All the Disputed Domain Names entirely incorporate either the mark CALVIN KLEIN or the mark CALVIN KLEIN. The only difference between the Disputed Domain Names and the Complainant’s marks is the addition of suffixes as follows:
Disputed Domain Name Suffix Panel’s Comments
boxers
This refers to products
uk
This is a geographical reference to the United Kingdom
ckunderwear
This refers to the initial letters of CALVIN KLEIN and products
underwears
This refers to products
underwears
This refers to products
It is a consensus view of past panel decisions that domain names which incorporate a trademark in their entirety together with suffixes or prefixes which are generic descriptors remain confusingly similar to the trademark. The Panel does not see any special circumstances of the case which demands a different treatment. It is therefore held that the Disputed Domain Names are confusingly similar to the Complainant’s marks and the first limb of paragraph 4(a) is established. B. Rights or Legitimate Interests
The Complainant has confirmed the absence of any agreement with the Respondent authorizing the Respondent to use the Complainant’s marks. There is nothing in the facts before the Panel to suggest that the Respondent has any rights or legitimate interests in the Disputed Domain Names. The Complainant has shown prima facie that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. The prima facie case has not been rebutted and the second limb of paragraph 4(a) is also established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides an example of bad faith registration and use as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The evidence strongly suggests that the websites resolved from the Disputed Domain Names are for commercial gain. The trademark registrations for the Complainant’s marks predate the Disputed Domain Names by almost 2 decades. The adoption of photographs and descriptions of the Complainant’s products on the websites resolved from the Disputed Domain Names corroborates the Complainant’s submission that it is implausible for the Respondent not to have been aware of the Complainant’s marks at the time the Disputed Domain Names were registered.
It has already been established above that the Disputed Domain Names are confusingly similar to the Complainant’s marks. Based on the evidence submitted, the Panel accepts that the Respondent has an intention to attract Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the websites resolved from the Disputed Domain Names and the products thereon.
Accordingly, the circumstances fall within the scope of paragraph 4(b)(iv) of the Policy and the third limb of paragraph 4(a). 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 Names, , , , and , be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: December 19, 2011
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