The 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. Hereinafter the Panel will refer to the Complainants collectively as “the Complainant”.
The Respondent is Domain Hostmaster, Customer ID: 41313688439561, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. On August 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 30, 2016, after a reminder had been sent by the Center, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 1, 2016, 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 September 1, 2016.
The Center verified that the Complaint together with 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 September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2016.
The Center appointed Charles Gielen as the sole panelist in this matter on October 6, 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. 4. Factual Background
The Complainant owns a number of United States trademark registrations, such as for the stylized trademark CALVIN KLEIN, registered under number 1,633,261 on January 29, 1991 as well as for the wordmark CALVIN KLEIN, registered under number 1,086,041 on February 21, 1978. Both trademarks are registered for apparel and other merchandise.
The disputed domain name was created on August 24, 2000. 5. Parties’ Contentions A. Complainant
The Complainant argues it 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 one or more of its trademarks. Specifically in the United States, the Complainant has used its trademark CALVIN KLEIN since as early as 1968. As a result of such use, customers in the United States and worldwide have come to associate the trademark CALVIN KLEIN with the products of the Complainant.
The Complainant contends it has used the trademark CALVIN KLEIN continuously since at least as early as 1968 in connection with the advertising, offering for sale, and sale of its various products in the United States and elsewhere. The Complainant’s use of the CALVIN KLEIN trademarks has resulted in millions of customers worldwide and billions of dollars in sales. According to the Complainant the trademark CALVIN KLEIN is well known and famous and has been for many years. Over these years, the Complainant has expended millions of dollars in advertising and promoting its products under its trademark in a variety of media throughout the world, including print, television, and radio advertisements.
The Complainant has also advertised its trademark CALVIN KLEIN through direct mail and on the Internet. Such advertising reaches a vast range of consumers: by way of example, since the Complainant’s website first launched in 1997, it has received hundreds of millions of visitors seeking information about the Complainant’s CALVIN KLEIN products. These products are sold exclusively through the Complainant’s own retail stores, outlet stores and websites including “” and, through authorized dealers, such as Macys, Neiman Marcus, Saks Fifth Avenue, and Bergdorf Goodman.
The Complainant furthermore contends that through extensive promotional efforts, advertising expenditures and sponsorship activities, the Complainant has been successful in educating the public to associate the trademark CALVIN KLEIN with the products of the Complainant since long before 2000, when the Respondent registered the disputed domain name.
According to the Complainant the website to which the Respondent’s domain name resolves, contains sponsored listings for clothing, lingerie and accessories amongst other goods and the domain is offered for sale as the top portion of the website includes the language “Buy this domain”. Further, the website of the Respondent contains links to several products including, but not limited to, underwear, clothing, suits, briefs, lingerie and watches.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark. Furthermore the Complainant argues that the Respondent does not have any rights or legitimate interests in the disputed domain name which was registered long after the Complainant established substantial rights in the trademark CALVIN KLEIN and also because the Respondent is not commonly known by the name Calvin Kelin. Finally the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith, because the Respondent is diverting customers or potential customers seeking information about the Complainant to the website which the disputed domain name resolves. The Complainant submits that the use of the disputed domain name by the Respondent will attract Internet users to the website of the Respondent by creating a likelihood of confusion with the trademark of the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant also mentions that the company behind the disputed domain name, Yolapt, is a cyber squatter as appears from a number of prior UDRP decisions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy. The Panel gives the following reasons for its decision. A. Identical or Confusingly Similar
The Complainant proves that it has rights in the trademark CALVIN KLEIN based on numerous trademark registrations and intensive use that resulted in this trademark to be well known around the world. The disputed domain name contains as first part the word “calvin” which is identical to the first word in the trademark of the Complainant. The second part in the disputed domain name is the word “kelin” which looks like a misspelling of the name Klein; this part contains exactly the same letters and the same numbers of letters albeit that the order of the four last letters is different. The Panel is of the opinion that when comparing CALVIN KLEIN with “calvinkelin” these signs are confusingly similar. When assessing whether or not the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy, the disputed domain name is confusingly similar if the trademark is recognizable in the disputed domain name. Seen as a whole the term “calvinkelin” is a mere misspelling of the Complainant’s mark and confusingly similar to the trademark CALVIN KLEIN. The Panel is of the opinion that for these reasons the disputed domain name is confusingly similar to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the “.com” is generally understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name the gTLD “.com” is usually disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.
Therefore, the requirement under paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s mark or its misspelled variation is not a term one would choose as a domain name without having specific reasons to choose such a term and this word certainly is not a descriptive term serving to indicate specific characteristics of any goods or services. Furthermore, the disputed domain name was registered long after the Complainant started to use the trademark CALVIN KLEIN. The Respondent did not contest the Complainant’s argument that it had never granted any authorization or license to the Respondent to use this trademark. Finally the Complainant made it clear that the disputed domain name was not used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The disputed domain name is offered for sale which is clear from the offer on the top of the website of the Respondent which says: “Buy this domain”. The Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.
In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.
The main reasons for this conclusion are as follows. First, there can be no doubt that it was the intention of the Respondent to choose a confusingly similar domain name since on the website to which the disputed domain name resolves, there are numerous links and references to the Complainant’s products. Second, by registering and using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of the Complainant as to the source, affiliation or endorsement of the website of the Respondent. This becomes clear when seeing that the links are likely sponsored generating revenue when clicked on. Furthermore the Respondent is diverting customers or potential customers seeking information about the Complainant to the website which the disputed domain name resolves. According to the Complainant the disputed domain name will divert Internet users to an unauthorized website bearing the intellectual properties or goods and services of the Complainant having no affiliation with or to the Complainant. Finally: the company exploiting the website is Yolapt. This company can be characterized as a cyber squatter which follows from a number of UDRP decisions, such as in Sony Corporation v. Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2008-0794 (concerning the domain name ), Revlon Consumer Products Corporation v. Whois Privacy Services Pty Ltd, /Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2010-1070 (concerning the domain name ), Zions First National Bank v. Whois Privacy Services Pty Ltd / Domain Admin Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2015-1894 (concerning the domain name ) and Wikimedia Foundation, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc. / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT,WIPO Case No. D2015-1978 (concerning the domain names and ). These cases show again the characteristics of cybersquatting which further evidences bad faith.
The Panel therefore considers the requirement of paragraph 4(a)(iii) to be met. 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 the Complainant.
Charles Gielen
Sole Panelist
Date: October 20, 2016
Full & Egal Universal Law Academy