Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc. of New York, New York, United States of America, represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Tyler Wong of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2015. On May 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2015, the Registrar 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 May 18, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2015.
The Center appointed Marie-Emmanuelle Haas as the sole panelist in this matter on June 15, 2015. 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.
In accordance to the Panel’s request, the Center sent an email to Complainants on June 29, 2015 explaining that the Complaint does not specify to whom the disputed domain name shall be transferred and that the Panel is asking to which entity the domain name should be transferred to, in case of such a decision. The response was that the disputed domain name should be transferred to the Calvin Klein Trademark Trust. 4. Factual Background
Calvin Klein Trademark Trust is the registered owner of the CALVIN KLEIN trademarks that are the subject matter of this UDRP proceeding.
Calvin Klein Inc. is the beneficial owner of the trademarks owned by Calvin Klein Trademark Trust and servicer for Calvin Klein Trademark Trust for a variety of merchandise.
The trademarks that are the subject matter of this UDRP proceeding are the following:
- CALVIN KLEIN (stylized), Reg. No. 1,633,261, registered January 29, 1991, in class 25 for clothing articles.
- CALVIN KLEIN, Reg. No. 1,086,041, registered February 21, 1978 in class 25 for clothing articles.
Calvin Klein Inc. owns a number of domain names, including: , , , and .
It has used and continues to use these domain names in connection with its products and services.
Calvin Klein Inc. has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories, and footwear, among other things, all in association with the Calvin Klein Intellectual Properties since 1968.
The CALVIN KLEIN trademarks have been used for more than 30 years and it resulted in millions of customers worldwide and billions of dollars in sales.
The CALVIN KLEIN trademarks are well known and famous.
Complainants have expended millions of dollars in advertising and promoting its products under it CALVIN KLEIN trademarks.
Complainants have also advertised the CALVIN KLEIN trademarks through direct mail and on the Internet, including on its websites.
The website “www.” has been launched in 1997.
The CALVIN KLEIN products are sold exclusively through Complainants’ own retail stores, outlet stores and websites including “www.” and, through authorized distributors.
As a result of such use, customers in the United States and worldwide have come to associate the CALVIN KLEIN mark with Complainants’ high quality products.
Respondent, Tyler Wong, appears to be domiciled in Hong Kong, China. The disputed domain name was created on December 30, 2014.
The CALVIN KLEIN trademarks have been filed and registered prior to the registration of the disputed domain name .
The disputed domain name resolves to a parking page providing hypertext links concerning a wide range of topics. One of them is dedicated to “shopping”. 5. Parties’ Contentions A. Complainants
Confusing similarity (UDRP Rules, paragraph 3(b)(ix)(1); UDRP Policy, paragraph 4(a)(i)).
Complainants assert that the United States Patent and Trademark Office registrations are sufficient to establish rights in the mark pursuant to the Policy, paragraph 4(a)(i). It also refers to its trademark protection in China, where Respondent is domiciled.
Complainants assert that the disputed domain name fully incorporates the CALVIN KLEIN trademarks and is therefore confusingly similar.
The generic Top-Level Domain (“gTLD”) extension “.website” should not be taken into consideration when examining the identity or similarity between the Complainants’ marks and the disputed domain name.
This gTLD “.website” likely adds confusion since it infers a link between “calvinklein” and “website”.
Rights or Legitimate Interests (UDRP Rules, paragraph 3(b)(ix)(2); UDRP Policy, paragraph 4(a)(ii)).
The disputed domain name has been registered without rights or legitimate interests.
The first use and registration of the CALVIN KLEIN trademarks predate the registration of the disputed domain name .
The disputed domain name was registered in 2014, more than thirty years after the first use of the CALVIN KLEIN trademarks and long after Complainants’ registration of the domain names , , and the operation of its websites.
Respondent was aware of Calvin Klein Inc.’s domain names and websites when it registered the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name.
It relies on prior UDRP cases to argue that Respondent’s registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests.
Respondent has no rights or legitimate interests in “Calvin Klein” because Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name resolves to a pay-per-click website that notably provides links to shopping and entertainment services.
Complainant relies on UDRP precedent to support this argument to argue that the disputed domain name diverts Internet users seeking Complainants’ website to Respondent’s affiliated pay-per-click website and that such use does not constitute a bona fide offering of goods or services.
Respondent is not commonly known by that name.
It relies on WhoIs information identifying Respondent as Tyler Wong, which demonstrates that Respondent is not commonly known by the name “Calvin Klein.”
Respondent has not authorized or licensed Respondent to use or register a domain name which incorporates the CALVIN KLEIN trademarks.
Respondent has failed to show it does have rights or legitimate interests.
Registered and used in Bad Faith (UDRP Rules, paragraph 3(b)(ix)(3); UDRP Policy, paragraph 4(c)(iii)).
Respondent registered and is using the disputed domain name in bad faith.
Respondent is diverting Internet users and customers or potential customers seeking information on the CALVIN KLEIN products and services.
Complainants point out that it has no control over the use of the disputed domain name which is using their intellectual property.
Many Internet users rely on the web browser’s URL to seek information about authorized sources of information and merchandise and the disputed domain name will divert internet users to unauthorized sources of merchandise.
Complainants rely on the fact that previous UDRP panels have argued that it is the responsibility of the Respondent for how the disputed domain name is used even if the content was generated by a parking company.
Respondent intends to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name (Policy, paragraph 4(b)(iv)).
A reverse WhoIs search based on the email address (used in the registration of the disputed domain name), discloses numerous domain names registered in the name of Respondent, containing very popular trademarks belonging to other rights holders, including but not limited to: , , , , , and others.
Respondent is attempting to prevent many famous rights holders, including Complainants, from registering domain names containing their primary trademark/brand.
Respondent’s registration of the disputed domain name was solely done to prevent Complainants from registering the domain name and therefore satisfies Policy, paragraph 4(b)(ii). B. Respondent
Respondent did not reply to Complaint. 6. Discussion and Findings
To prevail in the proceedings under the Policy, the Complaint must show that the three requirements set forth in paragraph 4(a) of the Policy are met. Those requirements are:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 4(c) of the Policy, the respondent can demonstrate its rights and legitimate interests in the disputed domain name by proving, among others, the circumstances mentioned under this paragraph of the Policy.
Likewise, paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which shall be evidence of the registration and use of a domain name in bad faith. A. Identical or Confusingly Similar
Complainants have clearly established prior rights in the CALVIN KLEIN trademarks.
The disputed domain name is entirely composed of the CALVIN KLEIN trademarks.
The Panel finds that the new gTLD extension “.website” does not dispel the confusing similarity between the disputed domain name and Complainants’ trademarks; further, the Panel agrees with Complainants that it likely adds to any confusion since the gTLD infers a relationship between the two words “calvinklein” and “website”.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainants’ trademarks.
The condition of the paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
As set forth by paragraph 4(c) of the Policy, any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate the respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to the respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent has not submitted any response to the Complaint or provided any evidence or circumstances to establish that it has rights or legitimate interests in the disputed domain name, according to paragraph 4(c) of the Policy or otherwise.
The Panel draws the inference therefrom, in accordance with paragraph 14(b) of the Rules, that Respondent has no rights or legitimate interests in the disputed domain name.
Moreover, there is nothing in the record that indicates that Respondent is commonly known by the disputed domain name.
Complainants have not licensed or otherwise permitted Respondent to use the CALVIN KLEIN trademarks, or to register any domain name incorporating the CALVIN KLEIN trademarks.
In addition, there is no evidence that Respondent makes a legitimate noncommercial or fair use of the disputed domain name without intention to divert consumers, as addressed under paragraph 4(c)(iii) of the Policy.
On the opposite, Respondent makes an unfair and commercial use of the disputed domain name. As alleged by Complainants, the links provided on the parking page, to which the disputed domain name resolves, are notably devoted to “shopping”.
The Panel agrees with Complainants that Respondent aimed at diverting the Internet users to its parking website, to generate traffic and to benefit from pay-per-click revenues.
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
Concerning bad faith registration of the disputed domain name , the Panel notes that the CALVIN KLEIN trademarks are protected and used for designating clothes and fashion articles and is well-known worldwide.
Therefore, Respondent was most likely aware of Complainants’ prior rights in the CALVIN KLEIN trademarks when registering the disputed domain name.
The Panel finds that the disputed domain name has been registered primarily for the purpose of capitalizing on the goodwill that has been developed by Complainant in the CALVIN KLEIN trademarks.
This is a typical cybersquatting practice targeting Internet users who are looking for the Complainants’ products.
The Panel notes that the circumstance that Respondent has seemingly engaged in a pattern of registering other domain names including third-parties’ well-known fashion trademarks with the new gTLD extension “.website” is a further indication of bad faith registration.
Concerning bad faith use of the disputed domain name , the Panel finds that Respondent’s action is in line with paragraph 4(b)(iv) of the Policy as Respondent is intentionally attempting to attract Internet users for commercial gain to its website by creating a likelihood of confusion with Complainants’ CALVIN KLEIN trademarks as to the source, sponsorship, affiliation or endorsement of Respondent’s website and services which are not in any way affiliated with Complainants.
Respondent is likely profiting from pay-per-click revenue generated by the parking website available at the disputed domain name , which constitutes commercial gain. This is further evidence of Respondent’s bad faith pursuant to paragraph 4(b)(iv) of the Policy. See Asian World of Martial Arts Inc v. Texas International Property Associates,WIPO Case No. D2007-1415.
Complainants have demonstrated that the disputed domain name has been registered and used in bad faith. The Panel is of the opinion that there is ample evidence for a finding of bad faith in this case.
Therefore, the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainants. 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 be transferred to Calvin Klein Trademark Trust.
Marie-Emmanuelle Haas
Sole Panelist
Date: June 29, 2015
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