The Complainants are Calvin Klein Trademark Trust and Calvin Klein, Inc. of New York, New York, United States of America ("United States"), represented by Kestenberg Siegal Lipkus LLP, Canada.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Stayu Kasabov of Sofia, Bulgaria, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “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 December 17, 2015. On December 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 18, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a request for clarification by the Center on December 22, 2015, the Complainant filed an amendment to the Complaint on December 22, 2015. The Center sent an email communication to the Complainant on December 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2015.
The Center verified that the Complaint together with the amendment to the Complaint and the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2016. The Respondent did not submit a formal response, but on December 28, 2015 sent a short email to the Center including a statement that it did not intend to contest the Complaint. On the same date, it confirmed that this email should be taken to be its full Response. On January 6, 2016, the Complainant filed a Supplemental Filing.
The Center appointed Ian Lowe as the sole panelist in this matter on January 19, 2016. 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.
The Panel has discretion whether to admit the unsolicited filing by the Complainant. The Panel cannot see any exceptional circumstances justifying such filing and accordingly declines to admit it. 4. Factual Background
Calvin Klein, Inc. is the beneficial owner of the CALVIN KLEIN trademarks, the subject of the Complaint of which Calvin Klein Trademark Trust is the registered proprietor. The Panel therefore accepts that it is convenient for Calvin Klein, Inc and Calvin Klein Trademark Trust to be treated as joint complainants and together to be referred to as “the Complainant”.
The Complainant has been engaged in the production, sale and licensing of men’s and women’s apparel, fragrances, accessories and footwear, among other things, since 1968 in the United States and around the world. It is the owner of numerous registered trademarks comprising “Calvin Klein” including United States trademark CALVIN KLEIN No. 1,086,041 registered on February 21, 1978. The Complainant has gained millions of customers and billions of dollars of sales under the CALVIN KLEIN mark and achieved worldwide reputation.
The Domain Name was registered on August 16, 2015 and resolves to a pay-per-click web page with links to various websites relating to lifestyle, books, fitness and travel. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its CALVIN KLEIN trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions, save for a short email to the Center in which it stated that “our goal is to build design community dedicated to the brand of Calvin Klein” and went on to state that it would not dispute anything. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark 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 Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has uncontested rights in the trademark CALVIN KLEIN, both by virtue of its many trademark registrations around the world and as a result of its widespread goodwill and reputation acquired through use of the CALVIN KLEIN mark over many years. Ignoring the generic Top-Level Domain ("gTLD") ".design", the Domain Name is identical to the Complainant’s mark. Although it is generally held that the gTLD suffix may be ignored when comparing the contested domain name and the trademark in which a complainant has rights, in this case the nature of the “design” gTLD and the products typically associated with the Complainant’s trademark exacerbates the potential confusing similarity between the Domain Name and the Complainant’s trademarks. The Panel finds that the Domain Name is identical or confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. In its email to the Center, the Respondent said that its intention in registering the Domain Name was to build a design community dedicated to the Calvin Klein brand. In the Panel’s view, such intention, without the consent of the Complainant, could not give rise to rights or legitimate interests in respect of the Domain Name. Furthermore, the use made of the Domain Name by the Respondent for a website comprising pay-per-click links to third party websites does not indicate any such rights. The Respondent has failed to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
For the same reasons, the Panel is satisfied that the Respondent registered and has used the Domain Name in bad faith. The Respondent has admitted that it had the Complainant and its rights in the CALVIN KLEIN mark in mind when it registered the Domain Name. An intention to “build a design community” and use of the Domain Name for a website comprising pay-per-click links to third party websites amounts to paradigm bad faith for the purposes of paragraph 4(a) of the Policy. The Panel accordingly finds that the Domain Name was registered and is being used in bad faith. 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 Domain Name be transferred to the Complainant Calvin Klein, Inc.
Ian Lowe
Sole Panelist
Date: January 31, 2016
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